Patent Paralegal Leader

Overall responsibilities and duties:

He/she updates invention and patent data in our IMPS (Intellectual Property Management System) in order to guarantee the accuracy and integrity of the IPR portfolio and in order to enable maintenance fee payments.

Assists Patent Engineers notably in respect of instructions to IP Firms, Patent Offices deadlines and preparation of PCMs (Patent Committee Meeting).

Calculates and instructs Inventor Bonus payments according Group Policy.

Handles invoices from suppliers (IP Firms and services providers) and track them to detect invoicing deviations and to respect the IP budgets allowed by the BGs.

All these tasks must be done in a global consistent manner through IP Sites.

The main missions of the role are:

• Docket new Inventions (IDF) in our IPMS and making sure all administrative data are completed.
• Assist Patent Engineers in communications IN/OUT with IP Firms, and in Patent Committees Meeting preparation.
• Update our IMPS with official data from IP Firms (filing, OA, Grant) and with our decisions (Subsequent Filing, abandons) for sake of our portfolio integrity.
• Check data and instruct patent maintenance fee payments for sake of our portfolio integrity.
• Calculates and handle Inventor Bonus payment up to instruction to HR.
• Enables payment of IP Firms invoices and tracks invoices by categories to detect abnormal invoicing and in order to respect IP budgets.

As Leader, he/she has deep knowledge of all Patent Paralegal tasks and communication skill enabling to train newcomers in distance mode.

As Leader, he/she has an expert knowledge about at least one IP topic (maintenance fees, IPMS administration, global reporting, invoicing, etc.) to be the referent person supporting other colleagues in case of issues, reverting to external firm for solving the issue if needed, as well to develop new procedures or tools for all IP sites.

Qualifications

The ideal candidate will have/be:

Minimum education level:

Bachelor (Bac +2) / accounting or assistant

Basic knowledge in Patent laws and procedures at Patent Offices and maintenance fee payments

Knowledge of an IPMS

Capability of checking patent legal status from professional databases and Patent Office Registers

Experience :

• Previous experience of paralegal in industry or in an IP Firms
• Work with distance and foreign colleagues

Skills and competencies

• Patent laws and procedures at Patent Offices and maintenance fee payments
• Knowledge of an IPMS (IP Management Systems)
• Patent database and Patent Office Registers
• Rigorous
• Professional oral and written communication in English and in the local language
• Work in a global environment with distance colleagues
• Communication clear and precise with internal colleagues (inventors and advisors) and with external firms (attorneys, paralegals and service suppliers)
• As leader, curious and capability to understand complex situations and to detect abnormal data

As leader, deep knowledge from a legal and practical points of view about at least one IP topic