Sr Intellectual Property (Patent) Paralegal

Illumina San Diego , CA 92140

Posted 2 months ago

The Role:

Illumina has an immediate need for a self-starting experienced Sr. Patent Paralegal to join a dynamic and growing in-house IP legal team. The position requires a subject matter expert in U.S., PCT and foreign patent prosecution while supporting 2 to 4 active patent practitioners.

  • Diligently performs all of the tasks required by an active patent docket, from filing to issuance, for "in-house" cases as well as manage those with outside counsel while supporting three to four patent practitioners.

  • Drives regular docket meetings with practitioners to review upcoming deadlines.

  • Researches, performs and accountable for all activities needed for pending docket deadlines.

  • Prepares and finalizes all documents needed to complete the filing of provisional, non-provisional and PCT applications.

  • Files all applications, formalities and response documents for U.S and PCT utilizing online resources, i.e. EFS, ePCT and PCT Safe.

  • Coordinates PCT national stage filings, direct foreign filings and EP regional phase filings with foreign counsel.

  • Communicates with inventors and accountable for overall timely management of formalities.

  • Working knowledge of disclosure requirements; Manages, prepares and files IDS/SIDS.

  • Proactively acquires quotes and works with service providers for obtaining translations, sequence listings, formal drawings, foreign patent costs, etc.

  • Comfortable and accountable for working in and maintaining the docketing database including timely addressing and de-docketing of all actionable dates when applicable.

  • Provides timely instructions to docketing pursuant to new filings, status reports and docket meetings.

  • Maintains and accountable for orderly, impeccable electronic files including IDS records management.

  • Works with practitioner to coordinate incoming and outgoing file transfers.

  • Stays current and compliant with MPEP and CFR rules and administrative changes at the USPTO and other foreign jurisdictions

All listed tasks and responsibilities are deemed as essential functions to this position; however, business conditions may require reasonable accommodations for additional tasks and responsibilities.

Requirements:

  • 5+ years of experience in both US and foreign patent prosecution. Law firm and in-house experience strongly preferred.

  • Subject matter expert and working knowledge of USPTO rules, filing requirements, US forms, navigating PAIR, and e-filing

  • Subject matter expert and working knowledge of PCT rules, filing requirements, PCT forms, PCT SAFE, navigating WIPO and filing documents via ePCT

  • Excellent working knowledge of Outlook and Microsoft Office suite (WORD, Excel, PowerPoint and Adobe) on a PC platform.

  • Experience working in and maintaining a docketing/document database. Foundation IP experience strongly preferred.

  • Candidate must be comfortable in a paperless environment with electronic only patent files.

  • Ability to work under minimal supervision, meticulous attention to detail, strong analytical abilities, resourcefulness and accountability.

  • Must have a positive, can-do attitude with the ability to flex in a frequently shifting environment.

  • Must have a strong commitment to excellence, customer service, and being part of the team.

  • Excellent communication skills, both verbal and written with an eye for details.

  • Ability to multi-task and work effectively and efficiently, managing multiple competing priorities.

Education:

Bachelor's degree and ABA Paralegal certificate preferred. Equivalent work experience will be considered.

Notary Public, commissioned in the state of California, a plus.

Illumina believes that everyone has the ability to make an impact, and we are proud to be an equal opportunity employer committed to providing employment opportunity regardless of sex, race, creed, color, gender, religion, marital status, domestic partner status, age, national origin or ancestry, physical or mental disability, medical condition, sexual orientation, pregnancy, military or veteran status, citizenship status, and genetic information. If you have a disability or special need that requires accommodation, please contact us at applications@illumina.com. To learn more, visit: https://www.dol.gov/ofccp/regs/compliance/posters/pdf/eeopost.pdf


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Sr Intellectual Property (Patent) Paralegal

Illumina