IP Paralegal

W.R. Grace & Co.; Columbia (MD); On-site; USD 65,000 - 90,000; Full time

Benefits offered by this job

Life Insurance

Disability Insurance

Grace Wellness Program

401(k) Company Match

Paid Vacation and Holidays

Tuition Reimbursement

Company Donation Match Program

Job summary

Grace, a Standard Industries company, is seeking a seasoned IP paralegal to support the Performance Catalyst Solutions business in Columbia, MD. The role reports to the Assistant General Counsel, IP, and handles day-to-day IP operations and administration.

The successful candidate will manage patent and trademark dockets, oversee CPI, supervise billing through Legal Tracker, and coordinate communications between law firms and Grace personnel.

Qualifications

• 5+ years of experience as a patent paralegal or IP specialist.
• Proficient with USPTO Patent Center, PAIR, and related docketing tools.
• Detail oriented with strong organizational skills.
• Independent yet collaborative work ethic and proactive attitude.
• Excellent verbal and written communication skills.
• Able to manage multiple projects and meet deadlines.

Responsibilities

• Manage patent and trademark prosecution dockets, tracking docket dates for in-house and outside counsel.
• Oversee CPI and maintain files for matters handled by outside and in-house counsel.
• Resolve routine matters without direct attorney involvement.
• Guide patent maintenance decisions and IDS submissions; use Patent Center tools.
• Serve as liaison between outside counsel and Grace personnel.
• Onboard law firm vendors and manage billing through Legal Tracker.

Skills

Patent docketing

Trademark docketing

Legal software

Billing software

Communication skills

Education

Paralegal certification

Tools

Legal Tracker

USPTO Patent Center

PAIR

Job description

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Grace, a Standard Industries company, is a leading global supplier of catalysts, engineered materials and fine chemicals. We provide innovative products, technologies and services which our customers use to manufacture everyday products like renewable fuels, pharmaceuticals, toothpaste, cosmetics, food packaging, beer, edible oils and more. Our thousands of employees help shape a better future at our global headquarters in Columbia, MD and locations worldwide.

Job Description

W.R. Grace (“Grace”) is looking for a seasoned IP paralegal to primarily support Grace’s Performance Catalyst Solutions business segment to join our legal team. This role reports into the Assistant General Counsel, IP and is located in Columbia, MD. The ideal candidate will have proven ability to independently be responsible for day-to-day IP operations and administration.

• Manage patent and trademark prosecution dockets including tracking docket dates to ensure in-house and outside counsel is timely meeting docket due dates.
• Manage and oversee CPI in order to properly maintain files for matters handled by outside and in-house counsel.
• Manage and resolve routine matters that do not require direct in-house attorney assistance or instruction.
• Provide guidance on patent maintenance decisions, requests for examinations, information disclosure statements, use of USPTO Patent Center, and the like.
• Serve as liaison between Outside Counsel and Grace Technical/ Business Personnel.
• Onboard new law firm vendors and manage the administration of law firm billing through Legal Tracker billing software.
• Communicate with law firms to resolve billing issues.

Responsibilities (2 of 2)

• Generate and analyze legal spending reports and assist with optimizing the use of Legal Tracker within the Grace Legal Department.
• Manage correspondence and prepare declarations, powers of attorney, agreements, foreign filing instructions, and the like for execution of Grace’s technical and business personnel.
• Communicate between patent attorneys, business segment managers and inventors, such as memoranda concerning filing confirmation, IDS submissions, office actions, allowances, and the like.
• Support agreement work (including confidentiality, research, testing, and joint development agreements)
• Support IP Department with other activities such as prior art searching/acquisition activities (due diligence).
• Address routine trademark related questions in conjunction with outside counsel.

Required Qualifications

• 5+ years of experience as apatent paralegal or IP Specialist at a law firm or company
• Database, Web/Search, and Computer Skills (e.g., www.uspto.gov , PAIR)
• Detail oriented
• Independent and collaborative work ethic
• Excellent organizational skills
• Strong verbal and written communication skills
• Proactive
• Takes initiative in seeing tasks to completion
• Flexibility when handling multiple projects required
• Approachable and positive attitude
• #LI -TC1

Preferred Qualifications

• Chemistry background with experience in conducting prior art searches.
• Experience with CPI
• Experience with Legal Tracker billing software, though Grace will provide training if needed
• Experience supporting trademark filing
• Experience supporting patent filing and prosecution
• Life Insurance and Disability
• Grace Wellness Program
• Flexible Workplace with maximum overlap with the core hours
• Retirement Plans
• 401(k) Company Match
• Paid Vacation and Holidays
• Tuition Reimbursement
• Company Donation Match Program

Grace is not accepting unsolicited assistance from search firms for this employment opportunity. Please, no phone calls or emails. All resumes submitted by search firms to any employee at Grace via email, the Internet or in any form and/or method without a valid written search agreement in place for this position will be deemed the sole property of Grace. No fee will be paid in the event the candidate is hired by Grace as a result of the referral or through other means.