IP Paralegal

Primary Responsibilities

• Managing/ Co-ordinating IP activities for India Centre on a day-to-day basis
• Plan, administer, and maintain IP training and incentive/recognition programs to encourage a culture of innovation at Vertiv.
• Work directly with inventors to harvest and develop ideas into viable invention disclosures.
• Draft, prepare and file patent applications with Indian Patent office and coordinate with outside counsel regarding foreign filings.
• Review and draft responses to office actions for both domestic and foreign filings.
• P rovide guidance and instructions to outside counsel on prosecution, international filing decisions, continuations, abandonments, etc.
• Oversee budgets and track spending for patent-related matters, including annuity and law firm payments; and
• Prepare reports of patent-related metrics/KPIs.

Requirements

• Indian Patent Agent
• BE/ME/MTech or equivalent from a reputed institute with minimum 5 years of experience in patent drafting, prosecution, search
• Experience in working with In House IP team would be an added advantage
• Must possess excellent interpersonal skills suitable for substantial client interaction.
• Proficiency in using patent databases such as Innography, Derwent, Questel etc.

Special Skills

• Excellent project management skills
• Excellent organizational, analytical, and interpersonal skills
• Detail-oriented
• Proficiency in MS Office
• Ability to work independently and multi-task in a fast-paced environment
• Familiar with the procedures set forth in the MPEP (Manual of Patent Examining Procedures) regarding the prosecution of patents, as well as knowledge of basic patent filing regulations in foreign countries
• Proficiency in reviewing and analyzing patents with the ability to summarize the scope of the patents and communicate such scope (both orally and in written form) to a variety of stakeholders