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Intellectual Property Paralegal

ZOLL Medical Corporation

ZOLL Medical Corporation

Legal
Chelmsford, MA, USA
Posted on Saturday, December 16, 2023
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 an experienced, well-organized professional to join our IP team. This person will assist our attorneys to meet legal deadlines. This person will file patent applications and prosecution documents with the United States Patent and Trademark Office (USPTO) and will also assist with keeping track of filings that are handled by our outside counsel. The ideal candidate will be a key member of ZOLL's IP team and be primarily responsible for ZOLL's patent docketing and filings, preparing patent prosecution documents, and the organization of intellectual property related documentation. The candidate will also be responsible for conducting weekly meetings with IP Counsel to review upcoming deadlines and filings. This position will be located at ZOLL’s Chelmsford headquarters. The position will report to ZOLL's Intellectual Property Filing & Paralegal Manager.

Essential job functions:

  • Responsible for patent and patent application docketing and instructing IP Counsel on patent prosecution deadlines on a monthly and weekly basis.
  • 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

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
  • Strong interpersonal skills and ability to work as a member of a team and take the lead in organizing patent docketing and filings
  • Must be proactive and able to work independently in a dynamic work environment

Education/Experience:

  • BA Degree or paralegal certification
  • 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

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.