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Legal Research Analyst/Patent Paralegal
Location : Maryland, Bethesda
Refer job # GOGW340966

Job Responsibilities and Requirements: Duties & Responsibilities Review, licensing agreements to forecast future royalty income for the Institute; create executive summaries of license agreements. Analyze the patent expense budget and project foreseeable costs associated with pursing domestic and/or foreign patent protection for NIAID inventions. Docket USPTO Office Actions and responses filed by law firms for patent prosecution matters; discern actionable items for staff. Maintain and enter data into databases (including primary responsibility for maintaining the integrity of data entered therein) including patent, employee invention report (EIR) and agreement data (Confidentiality Disclosure Agreements (CDAs), Material Transfer Agreements (MTAs), Conditional Gift Fund Agreements (CGFs), Cooperative Research and Development Agreements (CRADAs), etc.). Generate docket reports and help assure that upcoming deadlines are communicated within the office. Make recommendations to Director and other staff members to develop an acceptable plan for technical and administrative matters, including identification of work to be done, the scope to the project, and deadlines for completion, and proceeding independently. Coordinate with staff on assignments with broadly defined goals or mission to be accomplished and make specific directives as required. Manage administration of MTAs to provide more efficient timely transfer of materials for NIH scientists. Act as liaison between technology transfer specialist and external organizations inquiring about establishing MTAs as well as helping NIH inventors prepare PHS employee invention reports (EIRs). Act as primary point of contact for reviewers and specialists related to the NIH Technical Advisory Evaluation Committee (TEAC). Assist with preparation for and during TEAC and pre-TEAC meetings, and with post-TEAC proceedings Assist with advertising and marketing efforts; prepare and submit materials for publications in Federal Register, Federal Business Opportunities and other publications Assist in the administration of technology transfer agreements, including the preparation of reminder letters for payments under Cooperative Research and Development Agreements (CRADAs). Originate, review and draft cover letters and memos, and various other documents. Provide accurate verbal and written responses to inquiries regarding the status of technology transfer agreements. Coordinate with staff members to complete special projects including preparation of educational and marketing materials. Perform reference library maintenance. Establish and maintain paper and electronic files in accordance with TTIPO s SOPs and other requirements. Manage and maintain operational CAN for office supplies and expenses. Perform general office duties to include scheduling meetings, maintaining electronic office calendars, opening and distributing mail to staff, ordering and maintaining supplies/equipment-upon Government Approval, and making travel arrangements for staff-upon Government Approval, and processing travel vouchers. Conduct budget analysis and develop financial planning reports. Serve as office liaison for scientists, fellows and customer issues. Edit and maintain office website and SharePoint content. Assist with the development of PowerPoint presentations for meetings with upper management and for outside conferences. Curate, update and improve the office data bases. Evaluate and process Extramural Invention Waivers. Manage all outgoing MTAs. Triage of incoming MTA as requested. Requirements Bachelor s degree in Paralegal Studies or a related discipline. Masters degree Minimum of five (5) years of patent paralegal law firm experience, specifically patent prosecution experience in addition to the previous requirement. Ability to navigate legal and business internet search engines. Familiarity with USPTO and foreign patent prosecution documents and procedures. Ability to work independently, multi-task, including tracking and follow-up of outstanding projects. Experience with Microsoft Office Suite (MS Word, Excel, Outlook).



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