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Patent Paralegal at SUNY

 

About The Research Foundation for SUNY:

The Research Foundation for The State University of New York (RF) is the largest comprehensive university-connected research foundation in the country.

Our mission is to provide talent, services, and technology that empower SUNY to research, innovate, and transfer discoveries that transform the world’s knowledge economy.

Our vision is to make SUNY the best place for faculty, students and staff to research, innovate, and solve the world’s most pressing problems.

The RF serves SUNY by providing essential administrative services that enable SUNY faculty to focus their efforts on the education of students and the performance of life-changing research across a wide range of disciplines including medicine, engineering, physical sciences, energy, computer science, and social sciences. We work with the academic and business leadership of SUNY campuses to support research and discovery through the administration of sponsored projects and technology transfer and management of intellectual property for public benefit and economic growth.

The RF is committed to diversity, inclusion and a working environment that enhances productivity, creates personal and professional opportunities, unleashes everyone’s full potential and fuels innovation. We hold the organization and each other to the highest standards of integrity, accountability and ethical behavior.

Visit www.rfsuny.org and connect with the us on Facebook, Twitter and LinkedIn. Learn about SUNY at www.suny.edu.

ADDITIONAL CENTRAL OFFICE EMPLOYEE BENEFITS

As a learning organization, the RF encourages all employees to continue to grow and develop professionally.  At the RF Central Office, employees are offered many opportunities for learning and development, including Professional Development Planning, a 12-month Mentoring Program, Tuition Reimbursement, Job Rotation, DiSC Profile Behavioral Assessment, Employee Engagement Teams, Job Skills Training, and an Employee Wellbeing Team.

Job Description:

FUNCTION & SCOPE:

The Research Foundation for the State University of New York seeks a highly motivated, team player with entrepreneurial and academic partnering experience to be a Patent Paralegal in the Office of Industry and External Affairs. The Patent Paralegal is responsible for working closely with patent counsel to ensure proper management of a diverse portfolio of patent applications and patents. Prior experience with patent prosecution in an IP law firm is required. The candidate must be able to work both collaboratively and independently in a fast-paced client service environment, to manage multiple assignments daily, to anticipate upcoming deadlines and assignments, and to meet strict deadlines. Candidates must be focused on quality and detail oriented and possess strong leadership skills.

FUNCTION & SCOPE:

  • Daily processing of incoming and outgoing correspondence (including correspondence with outside counsel, the U.S. Patent & Trademark Office, foreign patent offices, authorities (IB) and annuity service vendor). Electronic docketing and paper docketing.
  • Implementing, maintaining, and managing docket database, as well as preparing patent docket reports and IP portfolio reports.
  • Ensuring that all docket dates have been cleared daily and that all patent related deadlines are met.
  • Monitoring status of patents and patent applications.
  • Responsibility for the enhancement, integrity, and maintenance of the docketing database.
  • Review of files and assistance with file transfers.
  • Managing the integration of acquired properties and transfer of divested properties
  • Must be capable of quickly recognizing and independently resolving discrepancies in records.
  • Generating docketing reports.
  • Responding to customer service inquiries.
  • Staying abreast of changes in patent rules.
  • Other duties and projects as assigned.
  • Ability to work closely with the team to develop, implement, and maintain docketing processes, procedures and policies for invention disclosures, patents, and patent applications, including daily or periodic clearance of workflow.
  • Provide backup coverage as needed to annuities, specifically investigation of discrepancies and verification/coordination of payments with vendor and foreign agents.
  • Provide backup coverage as needed to foreign filing, specifically secure PCT filings (utilizing both US/RO and IB/RO), non-PCT countries at convention date and national phase filings out of International Applications. Knowledgeable in formality requirements for ex-US filings and statutory deadlines within worldwide jurisdictions

The ideal candidate will:

  • have a passion for science and technology and knowledge of the regulated process of transitioning technology from the academic bench to qualified industry partners for the development of products and services that impact human health and welfare;
  • have excellent verbal and written communication skills and be comfortable communicating with anyone who interacts with SUNY research, innovation, and commercialization; this includes researchers, inventors, teaching faculty, entrepreneurs, business leaders at all levels, administrators, students, and representatives of all levels of local, state and federal government;
  • have an agile mindset, can-do attitude, a desire to “get to yes,” and willingness to tackle any task needed to get the job done with the unwavering support of teammates and leadership;
  • have strong project management skills or capacity to learn them quickly (we will train on our specific methodology) to be effective in taking both lead and supporting roles in RF projects.

Requirements:

SPECIAL SKILLS

  • Embrace of technology. All computer basics must be well-known, and candidates must be willing and able to explore and adapt to new tools.
  • Excellent verbal and written communication skills.
  • Ability to communicate well within a highly complex environment.
  • Ability to work independently under general direction.
  • Prioritize and manage multiple projects simultaneously with a sense of urgency.
  • Creative problem solver with the ability to anticipate challenges.
  • Sociable and excellent at interacting with people.
  • Able to work effectively as part of a team.

EDUCATION & EXPERIENCE

  • Bachelor’s degree and paralegal certificate.
  • At least five years of patent prosecution experience.
  • Experience conducting business with the USPTO, including the submission of documents, requesting certified documents, and troubleshooting of application related inquires.
  • Experience independently maintaining an accurate docket and proactively addressing deadlines.
  • Familiarity with Convention and Non-Convention US and non-US prosecution and formality requirements, in particular, experience preparing and reviewing draft application materials (e.g., ADS, specifications, formal drawings, transmittals, IDS, etc.).
  • Demonstrable knowledge and understanding of USPTO rules and practices, including M.P.E.P. Chapter 1500, e-Office Action, use of public/private PAIR and other online USPTO resources.
  • Proficiency with Microsoft Office, especially Microsoft Excel and Word (i.e., ability to work with spreadsheets and quantitative data, etc.).
  • Experience providing training and reviewing work product of peers.

Additional Information:

As an Equal Opportunity / Affirmative Action Employer, The Research Foundation for SUNY  will not discriminate in its employment practices due to an applicant’s race, color, creed, religion, sex (including pregnancy, childbirth or related medical conditions), sexual orientation, gender identity or expression, transgender status, age, national origin, marital status, citizenship, physical and mental disability, criminal record, genetic information, predisposition or carrier status, status with respect to receiving public assistance, domestic violence victim status, a disabled, special, recently separated, active duty wartime, campaign badge, Armed Forces service medal veteran, or any other characteristics protected under applicable law. 

The Company will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant.

Review of applications will begin immediately and continue until the position is filled.

The Research Foundation for the State University of New York is not an agency or instrumentality of the State of New York. Employees of the Research Foundation for the State University of New York are not state employees, do not participate in any state retirement system, and do not receive state fringe benefits. The Research Foundation for the State University of New York operates under a contract with The State University of New York and receives no directly appropriated state funding.

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