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Merck Specialist, U.S and Foreign Filing in Rahway, New Jersey

Job Description

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

Position Description:

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.

  • Foreign Docketing

  • 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

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 .





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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We are an equal opportunity employer, Minority/Female/Disability/Veteran – proudly embracing diversity in all of its manifestations.

Search Firm Representatives Please Read Carefully

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.

Employee Status:



No relocation

VISA Sponsorship:

Travel Requirements:

Flexible Work Arrangements:


Valid Driving License:

Hazardous Material(s):

Number of Openings:


Requisition ID: R37037