IP Paralegal

W. R. Grace; Columbia (MD); On-site; USD 72,000 - 99,000; Full time

Benefits offered by this job

Medical Insurance

Dental Insurance

Vision Insurance

Retirement plan

401(k) match

Paid vacations

Job summary

Grace, a leading global supplier of catalysts and fine chemicals, seeks an IP paralegal to support the Performance Catalyst Solutions unit from Columbia, MD. You will manage day-to-day IP operations, docketing, and liaise with outside counsel.

The role requires 5+ years in patent/IP paralegal work, strong attention to detail, and excellent communication. On-site in Columbia, MD with competitive benefits and bonus eligibility.

Qualifications

• Bachelor’s degree or paralegal certificate.
• 5+ years of experience as a patent paralegal or IP specialist at a law firm or company.
• Experience with IP docketing, patent/trademark prosecution, and docket management.
• Strong database, web/search skills including USPTO resources.

Responsibilities

• Manage patent and trademark prosecution dockets and deadlines.
• Oversee CPI for matter files with counsel.
• Maintain IP portfolio status reports and billing administration.
• Assist with patent maintenance decisions and USPTO actions guidance.
• Act as liaison between outside counsel and Grace personnel; onboarding of law firms.
• Prepare declarations, powers of attorney and foreign filing instructions.

Skills

Patent/IP experience

Independent & collaborative

Detail-oriented

Verbal and written communication

Education

Bachelor’s degree

Paralegal certificate

Tools

Legal Tracker

CPI

USPTO PAIR

Job description

Annual Wage Range: $72,012.80 - $99,017.60

Other Compensation: Eligibility for the Short-Term Incentive program and other applicable bonuses

Benefits: U.S. Employee Benefits Summary (grace.com)

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.

Responsibilities (1 Of 2)

• 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.


• Assist with IP portfolio management, including updating portfolio status reports


• 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

• Bachelor’s degree OR Paralegal certificate


• 5+ years of experience as a patent 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




• -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

Benefits

• Medical, Dental, Vision Insurance


• 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


• Parental Leave


• 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.

Nearest Major Market: Baltimore