IP Paralegal

W.R. Grace & Co.; Columbia (MD); On-site; USD 70,000 - 90,000; Full time

Benefits offered by this job

Life Insurance and Disability

Grace Wellness Program

Flexible Workplace

Retirement Plans

401(k) Company Match

Paid Vacation and Holidays

Tuition Reimbursement

Company Donation Match Program

Job summary

W.R. Grace & Co. is seeking a seasoned IP paralegal to support its business segments in protecting intellectual property. This role involves managing patent and trademark prosecution dockets and assisting with routine matters.

The ideal candidate will have a bachelor's degree or paralegal certificate, a minimum of 5 years of relevant experience, and excellent organizational and communication skills. Benefits include a flexible workplace and wellness programs.

Qualifications

• 5+ years of experience as a patent paralegal or IP Specialist at a law firm or company.
• Database, Web/Search, and Computer Skills required.
• Chemistry background with experience in conducting prior art searches is preferred.

Responsibilities

• Manage patent and trademark prosecution dockets.
• Assist in routine matters that do not require direct attorney instruction.
• Communicate between patent attorneys and business personnel.

Skills

Independent and collaborative work ethic

Excellent organizational skills

Strong verbal and written communication skills

Flexibility when handling multiple projects

Education

Bachelor’s degree or Paralegal certificate

Tools

Microsoft Outlook

Microsoft Word

Microsoft Excel

Microsoft PowerPoint

Adobe Acrobat

PAIRS

Job description

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 business segments in protecting the intellectual property related to catalysts and silica-based materials in conjunction with the Assistant General Counsel, IP for Grace. This role reports to the Assistant General Counsel, IP. The ideal candidate will have proven ability to independently shoulder the following responsibilities.

• Manage patent and trademark prosecution dockets including tracking docket dates to ensure outside counsel is timely meeting docket due dates.
• Manage and oversee CPI under attorney supervision in order to properly maintain files for matters handled by outside and in-house counsel.
• Assist in 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 PAIR, and the like.
• Serve as liaison between Outside Counsel and Grace Technical/ Business Personnel.
• 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).

Required Qualifications

• Bachelor’s degree or Paralegal certificate
• 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)
• Microsoft Outlook, Word, Excel, and PowerPoint, as well as Adobe Acrobat
• Outlook and Teams
• Independent and collaborative work ethic
• Excellent organizational skills
• Strong verbal and written communication skills
• Flexibility when handling multiple projects required
• Approachable and positive attitude

Preferred Qualifications

• Chemistry background with experience in conducting prior art searches.
• Experience with CPI
• Managing and creating Power BI interactive dashboards.
• Life Insurance and Disability
• Grace Wellness Program
• Flexible Workplace
• Retirement Plans
• 401(k) Company Match
• Paid Vacation and Holidays
• Tuition Reimbursement
• Company Donation Match Program