IP Legal Operations Manager

Company Details

Thermo Fisher Scientific

How will you make an impact?
When you are part of the team at Thermo Fisher Scientific, you will do important work, like helping customers find cures for cancer, protecting the environment, or ensuring our food is safe. Your work will have a real-world impact, and you’ll be supported in achieving your career goals. IP Operations Manager will support the IP Operations function at Thermo Fisher, including management of the IP management system Symphony, and optimizing IP processes, including supervising and coordinating with our IP team.

This position can be remote or hybrid at the locations posted.

What will you do?

Responsibilities

  • Serve as system administrator for Symphony, including supervising, coordinating, and monitoring docketing and annuities functions.
  • Responsible for management and administration of at least one key technology area, responsibility area, or significant vendor relationship of the IP Department (e.g., IP Management System, intranet site, Docketing, Inventor Awards, Deposit Account, Annuities, post-grant proceedings, corporate reporting, etc.).
  • Manage day-to-day activities of 2-4 paralegals, including conducting performance reviews and 1:1 meetings, reviewing and managing workflow, and providing career development opportunities.
  • Propose, design, and implement solutions to improve efficiency in key areas, incorporating or proposing revisions to internal procedures to support IP Department strategic goals and objectives.
  • Collaborate with Legal Operations on billing processes related to IP services, including Outside Counsel compliance with billing guidelines.
  • Act as a lead on projects, supervising of all tasks and determining strategies to ensure successful completion of assigned projects.
  • Leverage Symphony to collect, analyze and provide metrics and reports to practitioners and business leaders.
  • Develop and implement best-in-practice SOPs and guidelines for internal use in key technology areas; act as a resource and provide training to practitioners and paralegals via TEAMS using documented materials.
  • Monitor USPTO and Copyright Office rules, regulations, and fees review the impact on practice, and implement changes as needed to ensure continued compliance.
  • Maintain an understanding of the current status of the patent, trademark, and copyright laws, regulations, and rules for U.S. and foreign jurisdictions.
  • Support a group of patent attorneys/ agents with their prosecution dockets by filing documents with the Patent and Trademark Office (USPTO EFS) and managing file histories, including the filing of patent applications such as US and PCT applications and other core patent prosecution documents (e.g., IDS and SB08s, declarations, assignments, missing parts, amendments, and responses).
  • Review and draft a high volume of IP-related communication and correspondence from foreign associates, outside counsel, and in-house practitioners and process in accordance with internal protocols.
  • Correspond with outside counsel on active dockets; respond to inquiries and provide documents as requested.
  • Review, monitor, and clear out items from the docket reports, including past-due deadlines.

How will you get here?

Education and Experience

  • Bachelor’s degree required.
  • At least five years of relevant operations management experience and three years of experience working in a large in-house IP department or law firm.
  • At least two years of project management experience in a legal or scientific/engineering context. Formal project management training or certifications are preferred, although robust self-starters with expertise acquired on the job are also highly qualified.
  • Must possess a professional demeanor and the ability to work with others within the company and as part of a team.

Qualifications

  • Proficiency using IP management/docketing software (Symphony, Foundation IP strongly preferred), Legal Tracker, document management systems, and USPTO sites, including PAIR and TSDR.
  • Strong knowledge of patent and trademark lifecycle from invention through maintenance and US and foreign patent and trademark prosecution procedures, annuities, terminology, and deadlines.
  • Experience developing and implementing best practices and policies for internal and external clients.
  • Experience with monitoring metrics and developing reports.
  • Proven leadership and supervisory experience, with demonstrated interpersonal skills and the ability to teach, coach, and build confidence to motivate through adopting new processes.
  • Demonstrated problem-solving skills with an ability to identify issues, develop creative solutions, and learn quickly.
  • High proficiency with software and technology and the efficient use of software and technology for organization, reporting, and automating processes.
  • Demonstrated ability to work under pressure in a fast-paced, deadline-driven environment.
  • Highly organized and self-directed, efficient in project management and time management, and able to prioritize multiple complex tasks.
  • High proficiency in computer skills, including Word, Outlook, Excel, Visio, PowerPoint, and Adobe.
  • Strong process and project management skills.
  • Strong strategic thinking with excellent written and verbal communication skills.

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