Merck Specialist, U.S and Foreign Filing 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
The Office of General Counsel is seeking a U.S. and Foreign Filing Specialist to provide operational support to the Patent organization. Primary responsibilities are to prepare and file new U.S. patent applications (provisional and non-provisional) and foreign patent applications (Patent Cooperation Treaty (PCT), international and PCT national phase) in accordance with U.S. and international patent law and procedure. Position is located in Rahway, NJ.
Job responsibilities include but are not limited to:
U.S. and Patent Cooperation Treaty (PCT) Filings
Prepare U.S. Utility, Design and National Phase applications, and file U.S applications and formality documents (Formal Drawings, Sequence Listings, Application Data Sheet, any preliminary amendments and Information Disclosure Statements) with the USPTO following attorney review
Prepare PCT applications, and file PCT applications and formality documents with WIPO receiving office following attorney review
Format U.S. applications and PCT applications for filing; and develop and maintain structural and formatting requirements as set forth in the MPEP/WIPO
Foreign Filing and Coordination with Foreign Associates
Prepare International applications and foreign National Phase applications with reporting letters to clients. Analyze and research matters identified as needing additional attention. Notify responsible attorneys and staff of discrepancies or concerns.
Independently prepare and process all documentation necessary to meet all country filing requirements (Legalization, Certified Copies, Spanish Translations and Formal Drawings)
Independently prepare foreign formalities in accordance with international law and procedures
Take ownership for ongoing coordination with international agencies, receiving offices, and foreign associates for filing various applications. Succinctly and timely convey detailed information to team members, agencies, and foreign associates.
Respond to underlying application and procedural issues; proactively handle unique situations. Initiate initial research or delegate/forward as needed. Follow up and communicate to ensure issue has been resolved.
Act as a resource to attorneys and staff on PCT regulation and compliance.
Assist in developing internal foreign filing procedures in anticipation of rule changes in the PCT or other major jurisdictions such as the EPC, JPO, and BRIC countries.
Review and monitor all incoming foreign filing email and correspondence. Ensure that critical items receive appropriate response and that deadlines are entered in docketing system.
Monitor all application filing due dates to ensure deadlines are timely met; analyze internal correspondence to ensure appropriate docket removal
Electronically file relevant case-related documentation into document management system in accordance with established procedures
Education Minimum Requirement:
Associate degree or certificate in Paralegal Studies required
Bachelor’s degree preferred
Required Experience and Skills:
Five (5) years of patent filing or foreign docketing experience in a law firm or corporate legal department
Experience working with PCT-SAFE and the USPTO’s Electronic Filing System (EFS-Web)
Knowledge of, and familiarity with, worldwide intellectual property law and procedures
Advanced proficiency with docketing systems and U.S. and international Patent and Trademark Office databases
Advanced proficiency with MS Office Suite (Outlook, Word, Excel)
Proficiency with chemical drawing and nucleic acid and amino acid sequences tools
Extraordinary accuracy and attention to detail in analysis and communications
Strong organizational and time management skills, able to prioritize workflow, manage and meet competing deadlines
Strong communication skills, both oral and written
Strong interpersonal skills, collaborates well with others, skilled at interacting with all levels of personnel with professionalism
Resilient and change-agile, able to work in a fast-paced environment with a high volume of work
Able to handle confidential information sensitively and discreetly
Preferred Experience and Skills:
Five (5) years of US, PCT and national patent filing experience in a law firm or corporate legal department
Strong understanding of U.S. and international rules and procedure, including but not limited to the PCT, EPC, 37 C.F.R. Rules, and MPEP rules
Specific experience with Thomson IP Manager and First-to-File
Notary Public Commission
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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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Flexible Work Arrangements:
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Number of Openings:
Requisition ID: R37037
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