Merck Paralegal, Patent Prosecution Support in Rahway, New Jersey
We partner with the business to ensure we maintain our company’s values and high ethical standards, comply with the law, protect our people and enhance our reputation. We strive to foster an environment that is inspiring, supportive and diverse. We partner with the business to ensure we maintain our company’s values and high ethical standards, comply with the law, protect our people and enhance our reputation. We strive to foster an environment that is inspiring, supportive and diverse.
The Office of General Counsel currently has an opening for a Paralegal, Patent Prosecution, to provide support for global patent prosecution and special projects within its Intellectual Property Group (“IP Group”). This position is located in Rahway, NJ.
A successful candidate should possess strong oral and written communication skills, be self-motivated and excel in a team environment. This position is responsible for supporting multiple patent attorneys, including managing US and foreign patent prosecution dockets and assisting with worldwide patent prosecution and special projects. The candidate should also have a demonstrated capacity to manage and prioritize multiple tasks and to work efficiently and independently within a team structure in a high-volume environment in order to meet deadlines on a timely basis.
Job responsibilities include, but are not limited to:
Maintain an independent docket of patent prosecution tasks to be handled by the paralegal.
In support of US patent prosecution, independently draft and/or prepare simple to moderately complex legal documents including, for example, “shell” amendments and other office action responses (e.g., requests for continued examination, notices to file missing parts, certificates of correction); notice of allowance documents for internal review, including the preparation of allowed claims; and issue fee payments.
Independently draft and/or prepare responses to ex-US patent prosecution agents including, for example, responding to requests for cited references or patent prosecution file histories during prosecution in Israel and India, and assignments for patent listing in the Mexican Official Gazette.
Demonstrate and maintain a strong working knowledge of US and foreign patent prosecution procedures, including familiarity with the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP).
Electronically file patent prosecution documents, including amendments and other responses, using the United States Patent and Trademark Office’s (“USPTO”) Electronic Filing System (EFS-Web).
Proofread granted patents, with particular attention to the granted claims and heading information, and prepare certificates of correction where necessary.
Calculate patent term adjustment (PTA) using electronic tools.
Calculate and submit fees for US prosecution.
Monitor the progress of patent applications and patent attorney dockets using USPTO Private PAIR and the IP Group’s patent and document management systems, and assist attorney with handling docket items.
Effectively liaise with patent attorneys, foreign filing specialists, docketing staff and administrative associates, as appropriate, to provide superior support to attorneys and the IP Group.
Correspond with inventors related to various prosecution matters and manage, review and proactively address, as appropriate, outside counsel and agent correspondence, including maintaining and monitoring outside counsel docket reports and helping to coordinate their patent application filing and prosecution on behalf of our Company (alone or in conjunction with third parties).
Ensure electronic prosecution documents are properly named and saved in the IP Group’s document management system and uploaded to the internal electronic file system.
Review contents of patent application files to check for compliance with USPTO requirements and departmental standards and best practices.
Upload Orange Book listing forms to the IP Group’s official assets site in the internal document management system.
Prepare internal patent database reports or obtain patent information for supported attorneys, including for internal patent maintenance reviews.
Assist attorneys on patent-related projects including, for example, IP due diligence projects, which may involve obtaining copies of third-party patents and references, generating third party patent family reports, checking patent assignment history, and obtaining copies of third-party patent assignments.
Preliminarily assess results of patent watches.
- Associates degree, Paralegal certificate or equivalent preferred, but extensive relevant experience in patent legal support will be considered
Required Experience and Skills:
Minimum of three (3) years of patent prosecution experience in a law firm or in-house legal department.
Strong working knowledge of US and foreign patent prosecution procedures.
Experience with the USPTO Electronic Filing System (EFS-web).
Ability to work independently and exercise good judgment.
Ability to prioritize and effectively handlea large number of simultaneous assignments, act with a sense of urgency when needed, deliver exceptional and accurate work product, and work proactively.
Strong investigative, analytic and reasoning skills, as well as follow up and problem resolution skills.
Strong interpersonal skills and ability to work effectively and seamlessly in a diverse community interfacing with inventors, patent attorneys, foreign filing specialists, docketing staff and administrative associates.
Solid computer skills, with an advanced proficiency with MS Office Suite (Outlook, Word, Power Point, Excel and SharePoint) and Adobe Acrobat Pro.
Extraordinary attention to detail and organization skills, including docket review and proofreading.
Documented experience as a strong performer in current and past positions.
Ability to exercise initiative, flexibility, tact and independent judgment.
Enthusiastic, self-motivated team player with a strong work ethic.
Notary Public Commission (can be obtained after being hired into the role).
Preferred Experience and Skills:
Patent paralegal experience supporting pharmaceutical or biotechnology patent prosecution.
Experience with IP database management and electronic patent file software.
Experience with PTA calculation, review and analysis.
Proficiency with ChemDraw software.
Our Support Functions deliver services and makes recommendations about ways to enhance our workplace and the experience of working at our organization. Our Support Functions include HR, Finance, Information Technology, Legal, Procurement, Administration, Facilities and Security.
Who we are …
Merck & Co., Inc., Kenilworth, New Jersey, USA is known as “Merck” in the United States, Canada & Puerto Rico. We are known as “MSD” in Europe, Middle East, Africa, Latin America & Asia Pacific. We are a global biopharmaceutical leader with a diverse portfolio of prescription medicines, oncology, vaccines and animal health products.
We are driven by our purpose to develop and deliver innovative products that save and improve lives. With 69,000 employees operating in more than 140 countries, we offer state of the art laboratories, plants and offices that are designed to Inspire our employees as we learn, develop and grow in our careers. We are proud of our 125 years of service to humanity and continue to be one of the world’s biggest investors in Research & Development.
What we look for …
In a world of rapid innovation, we seek brave Inventors who want to make an Impact in all aspects of our business, enabling breakthroughs that will affect generations to come. We encourage you to bring your disruptive thinking, collaborative spirit and diverse perspective to our organization. Together we will continue Inventing For Life, Impacting Lives while Inspiring Your Career Growth .
NOTICE FOR INTERNAL APPLICANTS
In accordance with Managers' Policy - Job Posting and Employee Placement, all employees subject to this policy are required to have a minimum of twelve (12) months of service in current position prior to applying for open positions.
If you have been offered a separation benefits package, but have not yet reached your separation date and are offered a position within the salary and geographical parameters as set forth in the Summary Plan Description (SPD) of your separation package, then you are no longer eligible for your separation benefits package. To discuss in more detail, please contact your HRBP or Talent Acquisition Advisor.
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Merck & Co., Inc., Kenilworth, NJ, USA, also known as Merck Sharp & Dohme Corp., Kenilworth, NJ, USA, does not accept unsolicited assistance from search firms for employment opportunities. All CVs / resumes submitted by search firms to any employee at our company without a valid written search agreement in place for this position will be deemed the sole property of our company. No fee will be paid in the event a candidate is hired by our company as a result of an agency referral where no pre-existing agreement is in place. Where agency agreements are in place, introductions are position specific. Please, no phone calls or emails.
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Requisition ID: R37036
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