Patent Paralegal/Data Manager

GAP Solutions, Inc. • Contract • Chevy Chase, MD, US • 3d ago

Job Description

Position Objective: Provide services as a Patent Paralegal/Data Manager in support of the overall functions of the Technology Transfer and Intellectual Property Office (TTIPO) within the National Institute of Allergy and Infectious Diseases (NIAID).

Duties And Responsibilities

Manage all aspects of license agreement-related work in support of the TTIPO Technology Transfer and Patent Specialist (TTPS) including license application review, database entries, licensing-related documentation review, maintenance and retention, and licensing workflow navigation.
Review, analyze and maintain licensing agreements and forecast future royalty income for NIAID and CDC; create executive summaries of license agreements; communicate with licensees under the direction of TTPS.
Route negotiated and finalized agreements for signature by NIH and applicants; close out and process executed agreements in appropriate databases.
Generate reports relating to incurred and unreimbursed patent expenses for patent portfolios being licensed under agreements.
Routinely assist with license royalty review, analysis, reporting and distribution.
Provide assistance with license monitoring and enforcement activities for the NIAID and CDC portfolios.
Manage all aspects of patent-related work in support of the TTIPO Technology Transfer and Patent Specialist (TTPS) including: A. prepare and route invention/patent filing recommendation packages for review, B. enter data, perform data quality checks, review and attach information relating to: patent-filing, patent annuities, procurement of patent legal services , patent workflow.
Stay abreast of changes in the US and foreign patent laws and policies that have implications for NIAID and CDC patent portfolios and help implement necessary process and database adjustments to comply with appropriate changes.
Review and monitor patent annuity and maintenance fee payment deadlines and data in internal and external databases, ensure contracted annuity management service makes payments in accordance with patent filing recommendations and decisions made by NIAID and CDC and prepare upcoming patent annuity reports for review by TTPS periodically and as needed.
Analyze patent budget, expenses and project foreseeable costs associated with pursuing domestic and/or foreign patent protection for NIAID and CDC inventions.
Assist with review and management of third party patent filings where NIAID or CDC staff are named as inventors; prepare and forward formal patent documents to third party as appropriate.
Perform all actions to support and implement NIAID and CDC authorizations to discontinue patent prosecution.
Provide support for the administration of patent legal services contract; review incoming law firm billing and invoicing documents for formal requirements.
Communicate with law firms regarding filing confirmations, patent data, formal document requirements.
Generate new patent records in the database based on TTIPO patent filing decisions.
Docket Office Actions from the USPTO and Patent Offices worldwide and responses filed by law firms for patent prosecution matters; discern actionable items for TTIPO staff, as appropriate.
Enter data into databases, perform data quality checks, maintain database integrity for all actions relating to: patents, employee invention reports (EIR), patent maintenance and annuities, agreements and post-execution agreement compliance documentation. Data could broadly pertain to Licenses, Confidentiality Disclosure Agreements (CDAs), Material Transfer Agreements (MTAs), Conditional Gift Fund Agreements (CGFs), Cooperative Research and Development Agreements (CRADAs), Sales and Progress reports, etc, and data related to the administration of the patent legal services contract.
Participate in record retention policy implementation in databases and in physical records; timely remove records according to NARA approved record retention schedules.
Generate docket reports and help assure that upcoming deadlines are communicated within the office.
Make recommendations to TTIPO Director and other staff members to develop an acceptable plan for technical and administrative matters, including identification of work to be done, the scope to the project, and deadlines for completion, and proceeding independently.
Coordinate with TTIPO staff on assignments with broadly defined goals or mission to be accomplished and support with implementation as required.
Assist with preparation for and during TEAC and pre-TEAC meetings, and with post-TEAC proceedings.
Assist with advertising and marketing efforts; prepare and submit materials for publications in Federal Register, Linkedin, and other publications; assist in the administration of technology transfer agreements as necessary including managing communications with external organizations and NIAID divisions in regard to the biological materials and establishing simple agreements.
Originate, review and draft cover letters and memos, and various other documents.
Prepare training and standard operating procedure documents as needed to support TTIPO operations and use of databases.
Provide accurate verbal and written responses to inquiries regarding the status of technology transfer agreements.
Coordinate with staff members to complete special projects including preparation of educational and marketing materials.
Generate miscellaneous patent and licensing reports, as needed.

Basic Qualifications

BS degree in a related field is required.
At least 3 years of patent paralegal experience in a law firm required.

Minimum Qualifications

Ability to communicate effectively, orally and in writing, with non-technical and technical staff.
Detail-oriented and possess strong organizational skills with the ability to prioritize multiple tasks and projects

*This job description is not designed to cover or contain a comprehensive listing of activities, duties or responsibilities that are required by this position.

To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed above are representative of the knowledge, skill, and/or ability required. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

GAP Solutions provides reasonable accommodations to qualified individuals with disabilities. If you need an accommodation to apply for a job, email us at recruiting@gapsi.com. You will need to reference the requisition number of the position in which you are interested. Your message will be routed to the appropriate recruiter who will assist you. Please note, this email address is only to be used for those individuals who need an accommodation to apply for a job. Emails for any other reason or those that do not include a requisition number will not be returned.

GAP Solutions is an Equal Opportunity/Affirmative Action employer. All qualified applicants will receive consideration for employment without regard to their race, ethnicity, ancestry, color, sex, religion, creed, age, national origin, citizenship status, disability, medical condition, military and veteran status, marital status, sexual orientation or perceived sexual orientation, gender, gender identity, and gender expression, familial status, political affiliation, genetic information, or any other legally protected status or characteristics.

This position is contingent upon contract award.

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