IP Paralegal III jobs in United States
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Bristol Myers Squibb · 2 days ago

IP Paralegal III

Bristol Myers Squibb is a leading biopharmaceutical company dedicated to transforming patients' lives through science. The IP Paralegal III will be responsible for managing patent prosecution processes, ensuring compliance with USPTO requirements, and providing support to patent attorneys and agents.

BiotechnologyHealth CareMedicalPharmaceuticalPrecision Medicine
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H1B Sponsor Likelynote

Responsibilities

Advanced knowledge of US and foreign patent procedures and timeline of patent prosecution deadlines
Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Patent Center, IP Management Software and Document Management System and seeks to reconcile any noted discrepancies
Demonstrated efficient workload prioritization including the ability to efficiently manage multiple heavy dockets, multiple tasks, and e-mail workload including outside counsel e-mail review
Reviews patent application files to check for compliance with USPTO requirements and BMS department standards, takes initiative to resolve discrepancies
Reviews correspondence received from U.S. outside counsel law firms and liaises with agents to ensure they are following BMS processes and procedures and USPTO rules
Expert knowledge and working experience of the USPTO Patent Center filing system in order to independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings (ST. 26), preferred, amendments, information disclosure statements (track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms), office action responses, requests for continued examination, notices of appeal, reply briefs, Allowance Checklists, Allowed Claims, issue fee payments ,etc
Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review, and proof certificates of correction
Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO
Knowledge and expertise to customize/suggest language changes on forms as applicable to specific patent prosecution need
Identifies patent legal issues and/or problems based on knowledge of PTO procedures and suggests changes under patent practitioner guidance. Takes initiative to expand own knowledge
Advanced skills to independently draft and assist with attorney responses to worldwide foreign patent agents
Frequent use and familiarity of the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) to enable ability to identify legal issues/problems based on knowledge of PTO procedures
Knowledge and ability to conduct Patent Term Adjustment review and analysis and delivery of analysis summary to patent attorney/agent and independently drafts petitions for PTA reconsideration
Ability to work with docketing group by providing guidance on USPTO prosecution as it pertains to deadlines and workflows that impact the paralegal group
Advanced oral, writing, and communication skills including procedural document writing skills
Excellent organizational and accountability skills, takes initiative to follow up with inventors, counsel, and agents to meet critical deadline dates
Take initiative to partner and assists IP Paralegal Manager with onboarding and mentoring new legal assistants and paralegals
Frequently provides backup and support to legal assistants and paralegals
Process and reconcile expense reports
Experienced and organized travel arranger
Organizes small and large group meetings for attorneys/agents including meeting agenda and meeting minutes preparation
Consistently seeks out opportunities to provide support when there are gaps in coverage. (e.g., counsel, agents, and assistants)

Qualification

US patent proceduresUSPTO Patent CenterIP Management SoftwareDocument Management SystemPatent legal documentsMicrosoft Office 2013Adobe Acrobat ProPatent databasesDocketing experienceOrganizational skillsCommunication skillsTeamworkAttention to detailAdaptability

Required

Advanced knowledge of US and foreign patent procedures and timeline of patent prosecution deadlines
Monitors progress of patent cases and patent attorney/agent dockets through use of USPTO Patent Center, IP Management Software and Document Management System and seeks to reconcile any noted discrepancies
Demonstrated efficient workload prioritization including the ability to efficiently manage multiple heavy dockets, multiple tasks, and e-mail workload including outside counsel e-mail review
Reviews patent application files to check for compliance with USPTO requirements and BMS department standards, takes initiative to resolve discrepancies
Reviews correspondence received from U.S. outside counsel law firms and liaises with agents to ensure they are following BMS processes and procedures and USPTO rules
Expert knowledge and working experience of the USPTO Patent Center filing system in order to independently draft and prepare simple to moderately complex patent legal documents for submission to the USPTO including (but not limited to) patent applications, figures, sequence listings (ST. 26), preferred, amendments, information disclosure statements (track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms), office action responses, requests for continued examination, notices of appeal, reply briefs, Allowance Checklists, Allowed Claims, issue fee payments, etc
Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review, and proof certificates of correction
Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO
Knowledge and expertise to customize/suggest language changes on forms as applicable to specific patent prosecution need
Identifies patent legal issues and/or problems based on knowledge of PTO procedures and suggests changes under patent practitioner guidance. Takes initiative to expand own knowledge
Advanced skills to independently draft and assist with attorney responses to worldwide foreign patent agents
Frequent use and familiarity of the Code of Federal Regulations (Title 37) and the Manual of Patent Examining Procedure (MPEP) to enable ability to identify legal issues/problems based on knowledge of PTO procedures
Knowledge and ability to conduct Patent Term Adjustment review and analysis and delivery of analysis summary to patent attorney/agent and independently drafts petitions for PTA reconsideration
Ability to work with docketing group by providing guidance on USPTO prosecution as it pertains to deadlines and workflows that impact the paralegal group
Advanced oral, writing, and communication skills including procedural document writing skills
Excellent organizational and accountability skills, takes initiative to follow up with inventors, counsel, and agents to meet critical deadline dates
Take initiative to partner and assists IP Paralegal Manager with onboarding and mentoring new legal assistants and paralegals
Frequently provides backup and support to legal assistants and paralegals
Advanced knowledge of Microsoft Office 2013 including Outlook, Word, Word, Excel, PowerPoint, OneNote, SharePoint, MS Teams
Advanced knowledge of IP Management Software and Document Management Software
Advanced form editing capability in Adobe Acrobat Pro
Advanced proficiency in use of basic to advanced forms including IP Management Software generated forms
Strong skills and experience with Patent-In software to generate sequence listings. Desired but not mandatory with training available
Proficient knowledge and use of domestic and foreign patent databases, e.g., PCT Patent Scope; ePCT and EPO register
Advanced reference management proficiency including searching, procurement of patent references (U.S. and Foreign patents, journal articles) and familiarity with reference linking within IP management software or document management system
Advanced docketing experience working in an IP Management software application and the ability to provide docketing project support
Edit capability in Chemdraw. Desired but not mandatory with training available
Ability to quickly learn and adapt to new software, processes, and workflows to perform efficiently and provide key feedback to assist team members to maximize efficiency
Timely and efficient communicator with patent attorneys/agents, outside counsel firms, team members, cross-functional groups, and stakeholders
Process and reconcile expense reports
Experienced and organized travel arranger
Organizes small and large group meetings for attorneys/agents including meeting agenda and meeting minutes preparation
Consistently seeks out opportunities to provide support when there are gaps in coverage. (e.g., counsel, agents, and assistants)

Preferred

Bachelor's Degree or higher, or
10+ years of work experience as an IP Paralegal or Paralegal Certificate and 8+ years of work experience as an IP Paralegal in a law firm, an in-house legal department, a consulting firm, or comparable experience elsewhere
Ability to handle multiple projects with changing priorities while working independently
Ability to work within a team environment
Strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines
Adaptability and openness to learning, embracing changes in procedures and new technologies

Benefits

Health Coverage Medical, pharmacy, dental, and vision care.
Wellbeing Support Programs such as BMS Well-Being Account, BMS Living Life Better, and Employee Assistance Programs (EAP).
Financial Well-being and Protection 401(k) plan, short- and long-term disability, life insurance, accident insurance, supplemental health insurance, business travel protection, personal liability protection, identity theft benefit, legal support, and survivor support.
Paid Time Off
US Exempt Employees flexible time off (unlimited, with manager approval, 11 paid national holidays (not applicable to employees in Phoenix, AZ, Puerto Rico or Rayzebio employees)
Phoenix, AZ, Puerto Rico and Rayzebio Exempt, Non-Exempt, Hourly Employees 160 hours annual paid vacation for new hires with manager approval, 11 national holidays, and 3 optional holidays
Up to 2 paid volunteer days per year, summer hours flexibility, leaves of absence for medical, personal, parental, caregiver, bereavement, and military needs and an annual Global Shutdown between Christmas and New Years Day.

Company

Bristol Myers Squibb

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At Bristol Myers Squibb, we work every day to transform patients’ lives through science.

H1B Sponsorship

Bristol Myers Squibb has a track record of offering H1B sponsorships. Please note that this does not guarantee sponsorship for this specific role. Below presents additional info for your reference. (Data Powered by US Department of Labor)
Distribution of Different Job Fields Receiving Sponsorship
Represents job field similar to this job
Trends of Total Sponsorships
2025 (247)
2024 (278)
2023 (231)
2022 (180)
2021 (181)
2020 (169)

Funding

Current Stage
Public Company
Total Funding
$29.32B
Key Investors
Venrock
2025-11-05Post Ipo Debt· $5.74B
2024-02-14Post Ipo Debt· $13B
2023-10-30Post Ipo Debt· $4.5B

Leadership Team

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Charles Bancroft
CFO
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Cristian Massacesi
Executive Vice President, Chief Medical Officer and Head of Development
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Company data provided by crunchbase