Intellectual Property Paralegal

Zoll Medical Corporation • Full-time • Chelmsford, MA, US • 1w ago

Corporate, ZOLLMED.com

At ZOLL, we're passionate about improving patient outcomes and helping save lives.

We provide innovative technologies that make a meaningful difference in people's lives. Our medical devices, software and related services are used worldwide to diagnose and treat patients suffering from serious cardiopulmonary and respiratory conditions.

Job Summary

ZOLL Medical Corp is seeking a professional with previous patent paralegal experience to join our IP team. In this role, the IP Paralegal will have main responsibility of docketing and patent filings for two of ZOLL’s divisions, including leading on managing an active in-house docket, conducting weekly meetings with IP counsel to review upcoming deadlines, filing patent applications and prosecution documents with the United States Patent and Trademark Office (USPTO) and keeping track of filings that are handled by law firm counsel. The ideal candidate will be a key member of ZOLL's IP team and, in addition to being primarily responsible for patent docketing and filings, the IP Paralegal will prepare patent prosecution and other intellectual property related documentation, as well as assist on other IP related matters. This position will be located at ZOLL’s Chelmsford headquarters and will report to ZOLL's Intellectual Property Senior Paralegal Manager.

Essential Job Functions

Primary responsibility for patent and patent application docketing and instructing IP Counsel on patent prosecution deadlines (on a monthly and weekly basis) for at least two of ZOLL’s divisions.
Ability to take ownership of the assigned dockets, work independently and manage multiple tasks simultaneously
Preparation of supporting documents and templates related to patent prosecution, for example:
- Filing papers accompanying patent applications,
- Formal documents (for example, Declarations, Assignments, Powers of Attorney, etc.) and
- Patent prosecution papers (for example, Information Disclosure Statements, Responses to Office Actions, Issue Fee papers, etc.)
File patent applications and prosecution documents at the U.S. Patent and Trademark Office
Prepare and file Information Disclosure Statements, including obtaining the required documents and coordinating the filing of disclosures in a timely fashion, in coordination with IP Counsel and/or law firm counsel
Work with IP Counsel in managing patent prosecution and trademark documentation and preparing memos, spreadsheets, charts, presentations, etc.
Proofread patents, patent applications and supporting documents, as needed
Interface with outside (law firm) domestic and international counsel to oversee filings and set up ZOLL customer accounts as well as e-billing accounts
Assist on trademark, copyright and other intellectual property matters as appropriate
Work on miscellaneous projects as needed.

Skill Requirements

Must have previous experience, 5+ years working in a patent department, including patent docketing for the department, instructing lawyers on prosecution deadlines, and preparing patent prosecution related documents (such as the ones listed above)
Must have an in-depth understanding of patent procedures, both at the USPTO and foreign patent departments (especially regarding PCTs and the EPO)
Must have previous experience with filing patent applications and other patent prosecution related filings at the U.S Patent and Trademark Office
Must have previous experience managing client or company portfolios using patent docketing software
Must have previous experience serving as a primary interface and/or contact between a law firm or company and the United States Patent and Trademark Office, for example, to inquire about the status of applications and/or filings and with navigating the patent office website to obtain documents and information
Excellent interpersonal skills, as well as written and verbal communication skills
Ability to anticipate team needs and work as a member of a team

Required/Preferred Education And Experience

5+ years of relevant experience in either a law firm or inhouse patent department
Skilled in Patent Docketing (e.g. CPi), USPTO filing and assignment system (EFS, EPAS)
Proficient in Outlook, Word, Excel and document management systems
BA Degree or paralegal certification preferred

Physical Demands

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job.

Standing - Occasionally
Walking - Occasionally
Sitting - Constantly
Talking - Occasionally
Hearing - Occasionally
Repetitive Motions - Frequently

ZOLL is a fast-growing company that operates in more than 140 countries around the world. Our employees are inspired by a commitment to make a difference in patients' lives, and our culture values innovation, self-motivation and an entrepreneurial spirit. Join us in our efforts to improve outcomes for underserved patients suffering from critical cardiopulmonary conditions and help save more lives.

All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or status as a protected veteran.