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Manager, Patent Prosecution

Job Description

Position Description:

The Office of General Counsel is seeking a Patent Prosecution Manager to provide global patent prosecution support to the Intellectual Property organization. Primary responsibilities are to oversee a team of patent prosecution paralegals/paraprofessionals and assist with practice improvement initiatives, organizing and prioritizing tasks, caseload, and workflow, and advise on conflict resolution, as needed, while managing their own caseload.

This position has a hybrid office schedule with 3 days (flexible) in the office and based in Rahway, NJ.

A successful candidate should possess strong management skills, exceptional oral and written communication skills, be self-motivated and excel in a team environment. The candidate should also have a demonstrated capacity to manage and prioritize multiple tasks efficiently in a high-volume environment to timely meet all deadlines.

Job responsibilities include, but are not limited to:

  • Direct, manage and supervise the work of the patent prosecution paralegals, including providing coaching and advice on administrative IP issues and reviewing, as necessary, paralegal work product for completion and accuracy

  • Provide guidance and troubleshoot US and foreign patent filing and prosecution issues as identified by staff and attorneys

  • Take necessary action to always ensure adequate patent paralegal coverage; and monitor workloads across the patent paralegal team

  • Assist with overflow work by identifying additional resources and pitching in as necessary

  • Manage individual docket to remain abreast of best practices and procedures

  • Participate in internal filing and prosecution workflows and assist with formality reviews

  • Assist in the management of portfolios prosecuted by outside counsel

  • Generate statistical and other requested reports on an ad hoc basis from the docketing system

  • Collaborate with other IP leaders to maximize and encourage cross team cooperation in the functional areas of responsibility

  • Participate in departmental patent practice committees to ensure all filing and prosecution issues are streamlined and up to date

  • Oversee updates to internal patent prosecution procedure manual to assure compliance with USPTO rule changes and departmental patent practice committee recommendations

  • Manage the corporate USPTO customer number and monitor USPTO deposit account spend and monthly reconciliation

  • The role will require 3 days onsite in Rahway, there is flexibility to choose which days.

A successful candidate may also be called upon to assist with other duties and special projects within the team/IP Group. The successful candidate must exercise a high level of discretion with confidential information, operate independently, exercise good judgment and take initiative.  Excellent attention to detail, computer skills, professional communication and interpersonal skills, flexibility and teamwork are a must. 

Position Qualifications:

Education Minimum Requirement:

  • High School degree required

  • Bachelor’s degree, Associate degree, or Paralegal certificate preferred

Required Experience and Skills:

  • Minimum of ten (10) years patent prosecution experience in a law firm or in-house legal department.

  • Experience assisting with international patent prosecution, including proven experience and deep understanding of USPTO rules, laws and procedures (e.g., Code of Federal Regulations (Title 37); Manual of Patent Examining Procedure), and use of the USPTO’s Electronic Filing System and electronic forms.

  • Proficiency with all aspects of the job responsibilities for “Paralegal, Patent Prosecution” position

  • Proven ability to mediate, reconcile different viewpoints and clearly convey industry and departmental views and standards

  • Strong leadership and communication skills to work with individuals at all levels within the organization

  • Strong computer skills, with an advanced proficiency with MS Office Suite (Outlook, Word, Excel and SharePoint) and Adobe Acrobat Pro

  • Advanced proficiency with docketing systems and U.S. and international Patent and Trademark Office databases

  • Effective time management to meet deadlines including project management skills, prioritization, and consistent delivery of commitments, and ability to organize information and build upon ideas of others

  • Ability to foresee possible risks to project goals and deadlines and create pre-emptive solutions

  • Autonomy on complex tasks as well as ability to recognize need for and seek further direction of attorney

  • Discrete in handling sensitive and confidential information, and a high level of integrity          

  • Clear motivation and focus on achieving measurable, tangible results

  • Willingness to adopt change

  • Documented experience as a strong performer in current and past positions

Preferred Experience and Skills:

  • Specific patent paralegal experience supporting pharmaceutical or biotechnology patent prosecution

  • Prior experience leading or managing IP legal support professionals

  • Specific experience with Thomson IP Manager, First-to-File, and MS SharePoint

Our Support Functions deliver services and make recommendations about ways to enhance our workplace and the culture of our organization. Our Support Functions include HR, Finance, Information Technology, Legal, Procurement, Administration, Facilities and Security.

Who we are …

We are known as Merck & Co., Inc., Rahway, New Jersey, USA in the United States and Canada and MSD everywhere else. For more than a century, we have been inventing for life, bringing forward medicines and vaccines for many of the world's most challenging diseases. Today, our company continues to be at the forefront of research to deliver innovative health solutions and advance the prevention and treatment of diseases that threaten people and animals around the world.

What we look for …

Imagine getting up in the morning for a job as important as helping to save and improve lives around the world. Here, you have that opportunity. You can put your empathy, creativity, digital mastery, or scientific genius to work in collaboration with a diverse group of colleagues who pursue and bring hope to countless people who are battling some of the most challenging diseases of our time. Our team is constantly evolving, so if you are among the intellectually curious, join us—and start making your impact today.

NOTICE FOR INTERNAL APPLICANTS

In accordance with Managers' Policy - Job Posting and Employee Placement, all employees subject to this policy are required to have a minimum of twelve (12) months of service in current position prior to applying for open positions.

If you have been offered a separation benefits package, but have not yet reached your separation date and are offered a position within the salary and geographical parameters as set forth in the Summary Plan Description (SPD) of your separation package, then you are no longer eligible for your separation benefits package. To discuss in more detail, please contact your HRBP or Talent Acquisition Advisor.

New hires in office-based roles in the US & Puerto Rico will be required, subject to applicable law, to demonstrate that they have been fully vaccinated for COVID-19 or qualify for a medical or religious exemption to this vaccination requirement that can be accommodated without an undue burden to the operation. However, subject to applicable law, employees working in roles that the Company determines require routine collaboration with external stakeholders, such as employees in health services, customer facing commercial, or research based roles, will be required to be fully vaccinated as a condition of employment.

Current Employees apply HERE

Current Contingent Workers apply HERE

US and Puerto Rico Residents Only:

Our company is committed to inclusion, ensuring that candidates can engage in a hiring process that exhibits their true capabilities. Please click here if you need an accommodation during the application or hiring process.

For more information about personal rights under Equal Employment Opportunity, visit:

EEOC Poster

EEOC GINA Supplement​

OFCCP EEO Supplement

Pay Transparency Nondiscrimination

We are proud to be a company that embraces the value of bringing diverse, talented, and committed people together. The fastest way to breakthrough innovation is when diverse ideas come together in an inclusive environment. We encourage our colleagues to respectfully challenge one another’s thinking and approach problems collectively. We are an equal opportunity employer, committed to fostering an inclusive and diverse workplace.

Residents of Colorado:

Click here to request this role’s pay range.

Search Firm Representatives Please Read Carefully 
Merck & Co., Inc., Rahway, NJ, USA, also known as Merck Sharp & Dohme LLC, Rahway, NJ, USA, does not accept unsolicited assistance from search firms for employment opportunities. All CVs / resumes submitted by search firms to any employee at our company without a valid written search agreement in place for this position will be deemed the sole property of our company.  No fee will be paid in the event a candidate is hired by our company as a result of an agency referral where no pre-existing agreement is in place. Where agency agreements are in place, introductions are position specific. Please, no phone calls or emails. 

Employee Status:

Regular

Relocation:

No relocation

VISA Sponsorship:

Travel Requirements:

Flexible Work Arrangements:

Flex Time, Hybrid

Shift:

Valid Driving License:

Hazardous Material(s):

Number of Openings:

1

Requisition ID:R192956

Manager, Patent Prosecution

Rahway, NJ 07065
Full Time

Published on 08/05/2022

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