Job Details

Patent & Licensing Paralegal

Company name

Dovel Technologies, Inc.

Organization Type

In-House

Job Type

Legal Staff

Valid Through

Mar 06, 2021

Posted on

Nov 21, 2020

Years of Experience

Min 3 yrs required

Location

Bethesda, MD, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent General
Intellectual Property >> Intellectual Property - Trademark/Copyright
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Profile

Patent & Licensing Paralegal
Duties: Manage all aspects of license agreement related work in support of the office Technology Transfer and Patent Specialist (TTPS), including license application review, database entries, licensing-related documentation review, maintenance and retention, licensing workflow navigation, etc. Review, analyze and maintain licensing agreements and forecast future royalty income for the Institute; create executive summaries of license agreements; communicate with licensees on under the direction of TTPS. Research and analyze changing foreign patent policy that has implications for affecting patent protection for the Institute and CDC inventions. Identify and formulate foreign patent filing recommendations affecting Institute decisions related to patent applications and patents for the Institute and CDC inventions. Analyze the patent expense budget and project foreseeable costs associated with pursuing domestic and/or foreign patent protection for the Institute and CDC inventions. Docket Office Actions from the USPTO and Patent Offices worldwide and responses filed by law firms for patent prosecution matters; discern actionable items for Office staff. Maintain and enter data into databases (including primary responsibility for maintaining the integrity of data entered therein) including patent, license, employee invention report (EIR) and agreement data (Confidentiality Disclosure Agreements (CDAs), Material Transfer Agreements (MTAs), Conditional Gift Fund Agreements (CGFs), Cooperative Research and Development Agreements (CRADAs), etc.), and patent legal services contract administration-related data. Generate docket reports and help assure that upcoming deadlines are communicated within the office. Make recommendations to the Office Director and other staff members to develop an acceptable plan for technical and administrative matters, including identification of work to be done, the scope to the project, and deadlines for completion, and proceeding independently. Coordinate with Office staff on assignments with broadly defined goals or mission to be accomplished and make specific directives as required. Manage administration of MTAs to provide more efficient timely transfer of materials for Institute scientists. Act as liaison between technology transfer specialist and external organizations inquiring about establishing MTAs as well as helping NIAID inventors prepare PHS employee invention reports (EIRs). Act as primary point of contact for reviewers and TTIPO specialists related to the NIAID Technical Advisory Evaluation Committee (TEAC). Assist with preparation for and during TEAC and pre-TEAC meetings, and with post- TEAC proceedings. Assist with advertising and marketing efforts; prepare and submit materials for publications in Federal Register, Federal Business Opportunities and other publications. Assist in the administration of technology transfer agreements, including the preparation of reminder letters for payments under Cooperative Research and Development Agreements (CRADAs). Originate, review and draft cover letters and memos, and various other documents. Provide accurate verbal and written responses to inquiries regarding the status of technology transfer agreements. Coordinate with staff members to complete special projects including preparation of educational and marketing materials.

Qualification and Experience

Requirements: Bachelor’s or Master’s in Paralegal Studies or a related discipline. 3+ years of patent paralegal experience in a law firm required. Familiarity with USPTO and foreign patent prosecution documents and procedures. Ability to navigate legal and business internet search engines. Excellent organizational skills and attention to detail. Excellent oral and written communication skills. Ability to multi-task, including tracking and follow-up of outstanding projects. Experience with Microsoft Office Suite (MS Word, Excel, Outlook).

Additional info

Job ID: 2020-4417

Company info

Hirring Coordinator
Dovel Technologies, Inc.
7901 Jones Branch Drive, Suite 600
McLean, VA 21102

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