Patent Paralegal

Overview

Axle is looking to add a driven, flexible, organized, and meticulous Patent Paralegal to our dynamic team. The Contractor(s) shall provide services in support of the overall functions of the Technology Transfer and Intellectual Property Office (TTIPO), National Institute of Allergy and Infectious Diseases (NIAID).

Technical Requirements:

• Manage all aspects of patent-related work in support of the TTIPO Technology Transfer and Patent Specialists (TTPS) including:
  • Prepare and route invention/patent filing recommendation packages for review,
  • Enter and analyze data, perform data quality checks, review and attach information relating to patent-filing, patent annuities, procurement of patent legal services, patent workflow.
• Stay abreast of changes in the US and foreign patent laws and policies that have implications for NIAID and CDC patent portfolios and help implement necessary process and database adjustments to comply with appropriate changes.
• Review and monitor patent annuity and maintenance fee payment deadlines and data in internal and external databases, ensure contracted annuity management service makes payments in accordance with patent filing recommendations and decisions made by NIAID and CDC and prepare upcoming patent annuity reports for review by TTPS periodically and as needed.
• Support effective management of NIAID and CDC intellectual property and of the Patent and Legal Services ("PLS") task orders. Analyze patent budget, expenses and project foreseeable costs associated with pursuing domestic and/or foreign patent protection for NIAID and CDC inventions.
• Generate reports to identify upcoming patent application filing deadlines, to analyze and determine a patent filing strategy in advance of deadlines, and to track patent expenditures on a monthly and quarterly basis.
• Identify estimates from the patent law firms for TTIPO staff review; analyze estimated costs for NIAID and CDC to project and plan for funding of patent prosecution activities in the coming year; collect information under PLS task orders to support the COR's planning activities.

• Generate and analyze monthly and quarterly PLS Contractors Estimate Reports to ensure accuracy of invoicing and allow early billing discrepancies identification and resolution.

  Assist in the identification of remaining funds for timely obligations.

• Provide Quarterly Reports on NIAID/CDC patent expenses with remaining funds to TTPS; review reports received from PLS Contractors related to activities under the PLS task orders; identify discrepancies between PLS reports and internal databases; and prepare communications regarding such reports.
• Assist with review and management of third-party patent filings where NIAID or CDC staff are named as inventors; prepare and forward formal patent documents to third party as appropriate.
• Perform all actions to support and implement NIAID and CDC authorizations to discontinue patent prosecution.
• Provide support for the administration of PLS contract; verify and review incoming law firm billing and invoicing documents for accuracy and formal requirements.
• Coordinate reconsideration of and refunds for rejected invoices by PLS Contractors.
• Monitors PLS Contractors' invoice submission process for accuracy and timeliness.
• Become provisioned for invoice reviewer role in the NIH Business System (NBS) and perform this function for PLS invoices under the direction of NIH contracting officers and TTIPO Contracting Officers Representative.
• Ensure PLS invoice payment to vendors is recorded in ETT in a timely manner based on information in NBS to enable patent prosecution reimbursement from licensees of NIAID patent portfolio.
• Communicate with law firms regarding filing confirmations, patent data, formal document requirements.
• Generate new patent records in the database based on TTIPO patent filing decisions.
• Docket Office Actions from the USPTO and Patent Offices worldwide and responses filed by law firms for patent prosecution matters; discern actionable items for TTIPO staff, as appropriate.
• Manage all aspects of license agreement-related work in support of the TTIPO Technology Transfer and Patent Specialist (TTPS) including license application review, database entries, licensing-related documentation review, maintenance and retention, and licensing workflow navigation.
• Review, analyze and maintain licensing agreements and forecast future royalty income for NIAID and CDC; create executive summaries of license agreements; communicate with licensees under the direction of TTPS.
• Route negotiated and finalized agreements for signature by NIH and applicants; close out and process executed agreements in appropriate databases.
• Generate reports relating to incurred and unreimbursed patent expenses for patent portfolios being licensed under agreements.
• Routinely assist with license royalty review, analysis, reporting and distribution.
• Provide assistance with license monitoring and enforcement activities for the NIAID and CDC portfolios.
• Enter data into and analyze data in databases, perform data quality checks, maintain database integrity for all actions relating to: patents, employee invention reports (EIR), patent maintenance and annuities, agreements and post-execution agreement compliance documentation. Data could broadly pertain to Licenses, Confidentiality Disclosure Agreements (CDAs), Material Transfer Agreements (MTAs), Conditional Gift Fund Agreements (CGFs), Cooperative Research and Development Agreements (CRADAs), Sales and Progress reports, etc, and data related to the administration of the patent legal services contract.
• Participate in record retention policy implementation in databases and in physical records; timely remove records according to NARA approved record retention schedules.
• Generate docket reports and help assure that upcoming deadlines are communicated within the office.
• Make recommendations to TTIPO 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 TTIPO staff on assignments with broadly defined goals or mission to be accomplished and support with implementation as required.
• 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, LinkedIn, and other publications; assist in the administration of technology transfer agreements as necessary including managing communications with external organizations and NIAID divisions in regard to the biological materials and establishing simple agreements.
• Originate, review and draft cover letters and memos, and various other documents.
• Prepare training and standard operating procedure documents as needed to support TTIPO operations and use of databases.
• 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.
• Generate miscellaneous patent and licensing reports, as needed.
• Provide Notary Public services for Technology Transfer documents.

Specific Qualifications:

• At least 3 years of patent paralegal experience in a law firm required.
• The education, skills and relevant years of experience required for each support position are consistent with those identified as the minimum requirements for the labor categories specified in
  the contract.