Senior Intellectual Property Paralegal

Pennsylvania, United States
13 Feb 2019
End of advertisement period
13 Apr 2019
Contract Type
Full Time

The University of Pennsylvania, the largest private employer in Philadelphia, is a world-renowned leader in education, research, and innovation. This historic, Ivy League school consistently ranks among the top 10 universities in the annual U.S. News & World Report survey. Penn has 12 highly-regarded schools that provide opportunities for undergraduate, graduate and continuing education, all influenced by Penn’s distinctive interdisciplinary approach to scholarship and learning.

Penn offers a unique working environment within the city of Philadelphia. The University is situated on a beautiful urban campus, with easy access to a range of educational, cultural, and recreational activities. With its historical significance and landmarks, lively cultural offerings, and wide variety of atmospheres, Philadelphia is the perfect place to call home for work and play.

The University offers a competitive benefits package that includes excellent healthcare and tuition benefits for employees and their families, generous retirement benefits, a wide variety of professional development opportunities, supportive work and family benefits, a wealth of health and wellness programs and resources, and much more.

The Office of the Provost provides direction on all facets of the University’s academic mission, including education, faculty, research, online learning, global initiatives, admissions, athletics, student life, and arts and culture. The Provost’s Center aggregates programs and offices designed to support University operations, including: the Office of the Provost, the Office of the Vice Provost for Research and its reporting departments (Penn Center for Innovation, Environmental Health and Radiation Safety, University Laboratory Animal Resources, and Regulatory Affairs), the Office of the Chaplain, the Graduate Student Center and Family Resource Center, the Division of Recreation and Intercollegiate Athletics, College Houses and Academic Services, New Student Orientation, the Office of Student Conduct, the Center for Undergraduate Research and Fellowships, the Office of Undergraduate Admissions, the University of Pennsylvania Press, and all of the University’s arts organizations (Penn Museum, Institute of Contemporary Art, Annenberg Center for the Performing Arts, Arthur Ross Gallery, and University Art Collection). It also includes interdisciplinary academic centers and institutes that are more appropriately housed centrally than in an individual school, including the Laboratory for Research on the Structure of Matter, the Center for Cognitive Neuroscience, the Center for Neuroscience and Society, the Penn Institute for Urban Research, the Center for Teaching and Learning, Kelly Writers House, and Weiss Tech House.

The Senior Intellectual Property Paralegal is primarily responsible for supporting maintenance of the university s intellectual property portfolio. The Senior IP Paralegal will track and manage patent prosecution workflow including communications between licensing officers, inventors, and outside counsel. They will be responsible for logging new invention disclosures, maintaining comprehensive records of upcoming actions and deadlines in the PCI database, docketing incoming patent correspondence, compiling detailed information about upcoming actions, creating reports on IP prosecution status, obtaining cost estimates and approvals of legal work, and interacting directly with inventors to obtain feedback and signatures on patent-related documents and other information. They will also provide training and support to IP Paralegals and administrative staff. The Senior IP Paralegal will also negotiate inter-institutional agreements, client billing agreements, confidential disclosure agreements, and return of invention assignments. They will be responsible for managing deadlines, supporting compliance related activities, and ensuring that important information is being correctly communicated and recorded in the PCI database.

Bachelor’s Degree plus 3-5 years managing patent prosecution or equivalent experience.

Preferred skills include

  • Experience managing patent prosecution working as a paralegal, intellectual property manager, or other equivalent position
  • Working knowledge of patent prosecution deadlines, forms, processes, and terminology.
  • Understanding of university technology transfer, legal documents and/or intellectual property
  • Experience with databases, previous work with Inteum database is ideal
  • Excellent computer skills including extensive experience with MS Office Suite
  • Attention to detail with clear understanding of how to prioritize workload and manage multi-task projects appropriately
  • Excellent customer service including strong interpersonal, verbal and written communications and analytical skills
  • Ability to work independently and as part of a team with a high degree of initiative

Penn adheres to a policy that prohibits discrimination on the basis of race, color, sex, sexual orientation, gender identity, religion, creed, national or ethnic origin, citizenship status, age, disability, veteran status, or any other legally protected class.