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IP/Patent Paralegal

IP/Patent Paralegal

  • Location United States - Texas - Houston
  • Travel required No
  • Job category Legal Group
  • Relocation available No
  • Job type Professionals
  • Job code 143531BR
  • Experience level Entry
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Job summary

Role Synopsis

We are looking for an IP Paralegal to join the team!
This role handles domestic, foreign and international patent paralegal activities as well as global complex patent docket, assisting a team of attorneys in resolving routine legal issues. In addition the individual will manage and reduce risk and cost for a number of patent activities such as the acquisition and maintenance of bp’s patent rights.

Key Accountabilities

  • Manage domestic, international and foreign paralegal activities (i.e., patent filing, prosecution, and maintenance) in support of bp’s intellectual property needs – filing and prosecution of patent applications, validation of EP patent applications, filing of utility models, fee payments, and notarization and legalization procedures.
  • Interact with USPTO, WIPO and other foreign patent offices and outside counsel with respect to paralegal issues.
  • Instruct foreign law firms as appropriate, and handle all documents / correspondence in accordance with departmental practice.
  • Resolve legal issues with minimal supervision and work efficiently to meet deadlines. Regularly interact with bp’s clients for portfolio reviews, deadline management and obtaining documents / information.
  • Prepare and submit legal documents aligned with legal requirements for each jurisdiction and for bp’s patent practice such as powers of attorney and specific authorizations to third parties; intercompany assignments and worldwide assignments; and arrange for the legalization and notarization of them in line with country-specific legal guidelines.
  • Manage patent attorney dockets and maintain the patent and invention disclosure databases. From government notifications (national and international) and legal correspondence, capture accurately the deadlines and requirements for legal submissions and validate data / deadlines as captured by outsourced company; keep docket current; supporting the attorneys in the filing of submissions.
  • Handle complex pre filing issues that arise including security clearance; supporting the team in obtaining right to file and inventor details; work with Senior Paralegal or attorneys on complex filing issues. Evaluate instructions given in respect of inventors and evaluation of attorneys’ instructions.
  • Actively contribute to agenda for drive for simplification and harmonization of processes and procedures globally.

Essential Education

Formal qualifications constituting university degrees, examination certificates that confirm educational attainment or licenses.
Membership of a technical or professional body that has confirmed an individual has reached a level of capability within the field (usually but not necessarily obtained through examinations) or Formal certification that they can undertake specialist work or processes e.g. PMI.

Essential Experience

  • Previous patent paralegal experience
  • Previous experience of working in law firm, or in-house legal team with patent attorneys
  • Ability to prioritize workload in a fast-paced and fast paced environment.
  • Planning and organizational skills.
  • Strong attention to detail
  • Demonstration of bp values and behaviors

Desirable Criteria

Knowledge of trademarks / working as a trademark paralegal / administrator
Trademark portfolio management tool – WebTMs or similar
Strong interpersonal skills with proven ability to work as a team, demonstrating flexibility to support others in the team to achieve the best results. Foster a one team environment.

Additional Information

The role involves working with the IP team (attorneys and paralegals based in the US and UK) and with the clients throughout bp as this role works with inventors across the business and the world.

Key challenges:

Prioritizing work and ensuring it is completed in a timely manner. In times of high volume workload for the team, the individual should seek to support all members of the team.
Timely collaboration with attorneys, outside counsel and inventors in relation to resolution of legal issues as many legal submissions are subject to short deadlines.
Keeping up to date with legal changes as applicable to bp’s patent assets in key countries.

Why join us

At bp, we support our people to learn and grow in a diverse and challenging environment. We believe that our team is strengthened by diversity. We are committed to fostering an inclusive environment in which everyone is respected and treated fairly.
There are many aspects of our employees’ lives that are meaningful, so we offer benefits to enable your work to fit with your life. These benefits can include flexible working options, a generous paid parental leave policy, and excellent retirement benefits, among others!
We will ensure that individuals with disabilities are provided reasonable accommodation to participate in the job application or interview process, to perform essential job functions, and to receive other benefits and privileges of employment. Please contact us to request accommodation.

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