Senior Intellectual Property Paralegal

University Overview

The University of Pennsylvania, the largest private employer in Philadelphia, is a world-renowned leader in education, research, and innovation. This historic, Ivy League school consistently ranks among the top 10 universities in the annual U.S. News & World Report survey. Penn has 12 highly-regarded schools that provide opportunities for undergraduate, graduate and continuing education, all influenced by Penn’s distinctive interdisciplinary approach to scholarship and learning. As an employer Penn has been ranked nationally on many occasions with the most recent award from Forbes who named Penn one of America’s Best Large Employers in 2023.

Penn offers a unique working environment within the city of Philadelphia. The University is situated on a beautiful urban campus, with easy access to a range of educational, cultural, and recreational activities. With its historical significance and landmarks, lively cultural offerings, and wide variety of atmospheres, Philadelphia is the perfect place to call home for work and play.

The University offers a competitive benefits package that includes excellent healthcare and tuition benefits for employees and their families, generous retirement benefits, a wide variety of professional development opportunities, supportive work and family benefits, a wealth of health and wellness programs and resources, and much more.

Posted Job Title

Senior Intellectual Property Paralegal

Job Profile Title

Legal Coordinator Senior

Job Description Summary

The Senior Intellectual Property Paralegal is primarily responsible for managing the University of Pennsylvania's IP portfolio and maintaining technology and patent information in PCI's database. The Senior IP Paralegal will work with a team of licensing officers to manage the patent prosecution workflow including communications between PCI, inventors, and outside counsel. The position will be responsible for maintaining comprehensive records of upcoming actions and deadlines in the PCI database, including compiling detailed information about upcoming actions, creating reports on prosecution status, obtaining cost estimates and approvals of legal work, ensuring all deadlines are met, and obtaining signatures on patent-related documents. The Senior IP Paralegal will also serve as a key point of contact with licensees and third-party co-owners and will support negotiation of IP-related agreements. The Senior IP Paralegal will also assist the Director of IP and Operations with training, auditing, and updating of SOPs.

Job Description

Job Responsibilities

• Manages prosecution workflow for BD groups as assigned. Reviews, understands and records IP materials including new invention disclosures and complex patent correspondence in a timely and efficient manner using PCI’s database. Manages critical deadlines and ensures they are met.
• Serves as a liaison between licensing staff, faculty, and outside counsel regarding patent filing, prosecution and maintenance. Understands patent prosecution workflow and correspondence and is able to interpret and provide a basic analysis of the same.
• Assists Director with training, auditing, and updating patent related training materials and SOPs.
• Serves as a key point of communication with licensees and third party co-owners regarding all aspects of IP management including prosecution, maintenance and annuities, budgeting, and maintaining accurate exhibits, a ensuring clear communication.
• Works with legal and BD teams to support pre-execution phase of agreements by ensuring exhibits, assignments, expenses, and participation agreements are up to date.
• Creates, maintains and distributes activity reports and budgetary and statistical reports, as necessary.
• Provides support and back-up for compliance reporting, including reporting to federal agencies and foundations.
• Facilitates expense management, including obtaining estimates, setting budgets, and tracking expenditures.
• Facilitates completion of signature documents and other administrative functions related to patent filing.

Qualifications

• Bachelor of Arts and 3 to 5 years of experience or equivalent combination of education and experience is required.

Certifications or Education Required

• Bachelor’s degree and 3-5 years of related work experience, preferably managing patent prosecution or equivalent experience, or equivalent combination of education and experience required. Experience in IP law or Technology Transfer strongly preferred. Excellent attention to detail, follow-through, and closing. Proven ability to work under time constraints while adhering to strict deadlines. Excellent verbal and written communication skills, team player, experience with technology transfer database software highly desirable. Experience with Microsoft Office Applications required.

Job-Related Knowledge/Skill
Preferred skills include

• Experience managing patent prosecution working as a paralegal, intellectual property manager, or other equivalent position
• Working knowledge of patent prosecution deadlines, forms, processes, and terminology
• Understanding of university technology transfer, legal documents and/or intellectual property
• Excellent computer skills including experience with databases, previous work with Minuet database is ideal
• Attention to detail with clear understanding of how to prioritize workload and manage multi-task projects appropriately
• Excellent customer service including strong interpersonal, verbal and written communications and analytical skills
• Ability to work independently and as part of a team with a high degree of initiative

Application Requirement

• A Cover Letter and Resume/CV are required to be considered for this position. Please upload your Cover Letter where it asks you to upload your Resume/CV; multiple documents are allowed.  

Job Location - City, State

Philadelphia, Pennsylvania

Department / School

Provost's Center$51,824.00 - $85,000.00 Annual Rate

Salary offers are made based on the candidate’s qualifications, experience, skills, and education as they directly relate to the requirements of the position, as well as internal and market factors and grade profile.

Affirmative Action Statement 
Penn adheres to a policy that prohibits discrimination on the basis of race, color, sex, sexual orientation, gender identity, religion, creed, national or ethnic origin, citizenship status, age, disability, veteran status, or any other legally protected class.

Special Requirements 
Background check required after a conditional job offer is made. Consideration of the background check will be tailored to the requirements of the job.

University Benefits

• Health, Life, and Flexible Spending Accounts: Penn offers comprehensive medical, prescription, behavioral health, dental, vision, and life insurance benefits to protect you and your family’s health and welfare. You can also use flexible spending accounts to pay for eligible health care and dependent care expenses with pre-tax dollars.

• Tuition: Take advantage of Penn's exceptional tuition benefits. You, your spouse, and your dependent children can get tuition assistance here at Penn. Your dependent children are also eligible for tuition assistance at other institutions.

• Retirement: Penn offers generous retirement plans to help you save for your future. Penn’s Basic, Matching, and Supplemental retirement plans allow you to save for retirement on a pre-tax or Roth basis. Choose from a wide variety of investment options through TIAA and Vanguard.

• Time Away from Work: Penn provides you with a substantial amount of time away from work during the course of the year. This allows you to relax, take vacations, attend to personal affairs, recover from illness or injury, spend time with family—whatever your personal needs may be.

• Long-Term Care Insurance: In partnership with Genworth Financial, Penn offers faculty and staff (and your eligible family members) long-term care insurance to help you cover some of the costs of long-term care services received at home, in the community or in a nursing facility. If you apply when you’re newly hired, you won’t have to provide proof of good health or be subject to underwriting requirements. Eligible family members must always provide proof of good health and are subject to underwriting.

• Wellness and Work-life Resources: Penn is committed to supporting our faculty and staff as they balance the competing demands of work and personal life. That’s why we offer a wide variety of programs and resources to help you care for your health, your family, and your work-life balance.

• Professional and Personal Development: Penn provides an array of resources to help you advance yourself personally and professionally.

• University Resources: As a member of the Penn community, you have access to a wide range of University resources as well as cultural and recreational activities. Take advantage of the University’s libraries and athletic facilities, or visit our arboretum and art galleries. There’s always something going on at Penn, whether it’s a new exhibit at the Penn Museum, the latest music or theater presentation at the Annenberg Center, or the Penn Relays at Franklin Field to name just a few examples. As a member of the Penn community, you’re right in the middle of the excitement—and you and your family can enjoy many of these activities for free.

• Discounts and Special Services: From arts and entertainment to transportation and mortgages, you'll find great deals for University faculty and staff. Not only do Penn arts and cultural centers and museums offer free and discounted admission and memberships to faculty and staff. You can also enjoy substantial savings on other goods and services such as new cars from Ford and General Motors, cellular phone service plans, movie tickets, and admission to theme parks.

• Flexible Work Hours: Flexible work options offer creative approaches for completing work while promoting balance between work and personal commitments. These approaches involve use of non-traditional work hours, locations, and/or job structures.

• Penn Home Ownership Services: Penn offers a forgivable loan for eligible employees interested in buying a home or currently residing in West Philadelphia, which can be used for closing costs or home improvements.

• Adoption Assistance: Penn will reimburse eligible employees on qualified expenses in connection with the legal adoption of an eligible child, such as travel or court fees, for up to two adoptions in your household.

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To learn more, please visit: https://www.hr.upenn.edu/PennHR/benefits-pay