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Patent Secretary - 450

Job Type: Full time
Company/Firm: Intermolecular, Inc.
Location: San Jose, CA
Date posted: 08/26/10
Salary: Salary dependent on experience
Job Description:
Duties - IP development, prosecution, licensing and litigation

· Administering the prosecution of patent applications for the Company in the USPTO and other foreign patent offices.

· Supporting business and patent professionals (including executives, attorneys, engineers, inventors and department managers) in managing the patent portfolio.

· Docketing all patent related activity in a legal matter management system (“System”).

· Communicating such action items to appropriate engineering, legal and business professionals

· Monitoring maintenance fee activities via System and working with outside vendor to ensure timely payment.

· Preparing and obtaining signatures for legal documents including Assignments, Powers of Attorney, Oaths and Declarations for filing with the appropriate government authorities.

· Filing legal documents electronically via US Patent Office Electronic Filing System in a timely manner.

· Docketing, searching and identifying prior art (with appropriate help from counsel) that needs to be disclosed, for each patent application.

· Filing Information Disclosure Statements (IDS) with USPTO via the Electronic Filing System.

· Coordinating with external counsels for assignment related matters, weekly reporting, patent application drafting, and accounting of patent activities and costs.

· Processing invoices electronically.

· Conducting research related to patent licenses and litigation.

· Coordinating with external counsels in litigation matters including assisting with discovery and managing document preservation and collection.

· Providing administrative support to the Company’s Legal Department including scheduling inventor, outside counsel, licensing and litigation related meetings.

· Preparing a weekly report on on-going patent matters as required.

· Scanning and docketing signed copies of all required documents in the System.

· Filing all required documents in the appropriate physical folders in the Legal Department.

· Receiving invention disclosures from inventor(s), checking for completeness, docketing and filing the disclosure.

· Acknowledging the receipt of the disclosure to each inventor and informing them of the timeline for processing.

Sending the invention disclosure for internal review and monitoring the timely return of the review· Conferring with the appropriate Intermolecular attorney after review and sending the approved disclosures for preparation to the law firms.

· Notifying inventor(s) of the last firm assigned to their invention and monitoring the timely return of the application.

· Preparing documents for filing of the patent application in the patent office.

· Processing communication from the patent offices and outside law firms and promptly informing Intermolecular attorney of the same.

· Preparing patent applications for issue after they have been allowed by the patent office.

· Monitoring the patent docket for deadlines such as foreign filing, reissue, reexamination, office action responses.

· Keeping lists in the database up to date.

· Using MS Access, MS Word, MS Excel and PowerPoint for data entry, retrieval and presentation.

· Docketing and filing incoming mail.

Duties - Contracts

· Providing support to legal and business professionals in the review, execution, performance, renewal, and termination of all contracts for all departments throughout the Company.

· Assisting with drafting and finalizing various types of contracts including vendor, sales, marketing, and non-disclosure/confidentiality agreements.

· Ensuring all contract documents are properly executed according to Company policies and procedures.

· Monitoring and following up with the business organization to ensure contract documents have been routed through Company’s processes and systems including the System.

· Fielding questions and providing necessary documentation to the internal sales, finance, customer relations, and product management teams.

· Collaborating with other departments for new contract processes and improving upon them.

· Maintaining key information in the System for tracking of key contract related terms and dates.

· Preparing a weekly report on on-going and closed matters.

· Scanning and docketing signed copies of contracts in the System.

Duties - Administrative support for Legal Department

· Organizing and filing all documents related to patents, contracts, trademarks and other legal matters.

· Providing administrative support including schedule management, travel arrangements and preparing itineraries; submitting and tracking internal requests; coordinating meetings and group events; preparing & tracking expense reports; and interfacing with administrative staff, high level executives and their assistants both internally and externally.

· Assisting with correspondence, memos, charts, tables, graphs.

Monitoring action items related to patents, trademarks and contracts activity using the System and notifying the relevant parties as required.

Minium Requirement

BS degree and 3+ years of paralegal experience in a legal department or a law firm.

Candidate must:

· be proactive, action oriented and take directions well

· be able to deal with conflicting priorities

· care about client satisfaction

· cultivate a sense of integrity and trust

· have interpersonal savvy

· be organized and practice excellent listening skills

· want to grow professionally

· have process management skills

· have good written and oral communication skills

Necessary Experience: N/A
Contact: N/A

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