Address
Form of work
SalaryPosting Title
Intellectual Property Paralegal– Patents .
Location
CO - Golden .
Position Type
Regular .
Hours Per Week
40 .
Working at NREL
The National Renewable Energy Laboratory (NREL), located at the foothills of the Rocky Mountains in Golden, Colorado is the nation's primary laboratory for research and development of renewable energy and energy efficiency technologies. From day one at NREL, you’ll connect with coworkers driven by the same mission to save the planet. By joining an organization that values a supportive, inclusive, and flexible work environment, you’ll have the opportunity to engage through our ten employee resource groups, numerous employee-driven clubs, and learning and professional development classes.
NREL supports inclusive, diverse, and unbiased hiring practices that promote creativity and innovation. By collaborating with organizations that focus on diverse talent pools, reaching out to underrepresented demographics, and providing an inclusive application and interview process, our Talent Acquisition team aims to hear all voices equally. We strive to attract a highly diverse workforce and create a culture where every employee feels welcomed and respected and they can be their authentic selves.
Our planet needs us! Learn about NREL’s critical objectives, and
see how NREL is focused on saving the planet.
Note: Research suggests that potential job seekers may self-select out of opportunities if they don't meet 100% of the job requirements. We encourage anyone who is interested in this opportunity to apply. We seek dedicated people who believe they have the skills and ambition to succeed at NREL to apply for this role.
Job Description
The successful candidate will primarily serve as patent paralegal (sometimes referred to as legal assistant)-one of two in this role at NREL-and support patent counsel in the timely preparation and filing of patent applications and prosecution documents for a large portion of the laboratory's domestic and foreign patent docket; serves as the point of contact for official correspondence from worldwide patent offices, domestic and foreign patent counsel, and third-party partners for all assigned patent matters; and prepares and delivers patent- and invention-related correspondence to the U.S. Department of Energy (using iEdison), NREL’s Technology Transfer Office, and NREL research staff for all assigned patent matters.
This position has the potential to be hybrid or fully remote.
Specific duties will include (but not necessarily be limited to):
- Generating all formal documents associated with the filing and prosecution of patent applications, including inventor declarations and assignments, Application Data Sheets, etc., and generating initial outlines for various communications by patent counsel.
- Organizing and preparing Information Disclosure Statements and managing references for citation to the U.S. Patent and Trademark Office (USPTO).
- Reviewing and preparing all applications for issuance, including payment of official fees.
- Reviewing all incoming official patent correspondence for accuracy and performing routine quality checks on applications when new correspondence is received.
- Participating in the docketing and calendaring of all actionable patent-related items received by the legal office.
- Reviewing NREL’s patent docket on a daily basis and advising patent counsel of relevant dates and deadlines.
- Managing and updating data in NREL’s patent docketing system (The IP Management System from Clarivate) and preparing docket reports as needed.
- Managing and submitting invoices from outside counsel for payment.
- Proactively utilizing (and maintaining a high level of proficiency with) Intellectual Property (IP) docketing and document management databases, USPTO’s Patent Center database, and filing system, and foreign patent databases.
- Provide reporting to stakeholders throughout the laboratory, including performing Boolean queries in NREL’s patent docketing system and/or other systems and collating results.
- Filing all patent applications and responsive communications with the USPTO.
- Delivering instructions and claim amendments to foreign and domestic patent counsel.
- Creating and maintaining electronic files for all patent matters and managing and promptly updating all data in these files when appropriate.
- Participating on an integrated team including other ip administrators, patent counsel, members of the NREL’s Technology Transfer Office, and NREL research staff, to help assess the technical, legal, and business merits of NREL innovations.
- Review and docket all Records of Invention and enter information in IP management databases.
- Manage governmental reporting deadlines for laboratory inventions via the U.S. Government’s iEdison system.
- Coordinate and record internal communications between patent counsel and other members of the laboratory, as well as external communications with third parties.
- Communicate directly with NREL research staff, U.S. Department of Energy personnel, and other stakeholders concerning inventions, patent applications, and issued patents.
- Effectively collaborate with patent counsel and patent agents to manage the assigned docket.
- Coordinate with counterparts working for patent licensees, as applicable, on prosecution matters.
- With attorney assistance, perform review of laboratory publications to address potential legal issues before publication.
- On a quarterly basis, manage internal process to collect payment decisions and work with outside vendor to ensure patent annuity and maintenance fees are timely paid, both domestically and internationally.
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Basic Qualifications
For a Specialist III:High School Diploma or equivalent and 4 or more years of experience or equivalent relevant education/experience. Or, relevant Associate's Degree or certification program of comparable scope and 2 or more years of experience or equivalent relevant education/experience. Full knowledge of specialized focused business support functions. Complete understanding of the general and detailed aspects of the business support activities, and their practical applications to problems and situations ordinarily encountered. Fully competent in applicable software packages and office equipment. Demonstrated project administration skills. Full knowledge of specific principles, procedures and practices related to supported fields and disciplines. Strong written and verbal communication skills, team and interpersonal skills.
For a Specialist II:
High School Diploma or equivalent and 1 or more years of experience or equivalent relevant education/experience. Or, relevant Associate’s Degree or certification program of comparable scope or equivalent relevant education/experience. Considerable knowledge of the job. Substantial understanding of general aspects of the job with a broad understanding of the detailed aspects of the job. Intermediate skills in applicable software packages and office equipment. Basic project administration skills. Ability to prioritize work. Proficient written and verbal communication skills. Very good team and interpersonal skills.
- Must meet educational requirements prior to employment start date.
Additional Required Qualifications
- Eligibility requirements: This position will require access to sensitive information, Government facilities, and/or Government information systems restricted to individuals with US citizenship. Only applicants that are US Citizens at the time of application will be considered.
Specialist III:
- Demonstrated experience filing patent applications and preparing drafts of formal patent office communications in diverse technical fields related to the business of the laboratory. Track record of proficiency with IP docketing systems, USPTO databases, and filing systems.
- Considerable knowledge of laws, regulations, principles, procedures, and practices related to U.S. and foreign IP. Strong leadership, project management, and problem-solving skills. Able to seamlessly participate and contribute as both a team leader and a team member as necessary.
- Ability to use various computer software programs. Highly skilled with Microsoft Office products (particularly including Word, Excel, and Outlook) and IP docketing/database software in particular.
- At least (4) years of solid patent prosecution experience working with the USPTO and foreign patent offices.
- Must be meticulous, detail-oriented, and possess excellent organizational and time management skills. Able to multi-task and to work independently yet seek guidance when appropriate.
- Superlative data management and proofreading skills.
Specialist II:
- Demonstrated experience filing patent applications and preparing drafts of formal patent office communications in diverse technical fields related to the business of the laboratory. Track record of proficiency with IP docketing systems, USPTO databases, and filing systems.
- Knowledge of laws, regulations, principles, procedures, and practices related to U.S. and foreign IP. Strong leadership, project management, and problem-solving skills. Able to seamlessly participate and contribute as both a team leader and a team member as necessary.
- Ability to use various computer software programs. Skilled with Microsoft Office products (particularly including Word, Excel, and Outlook) and IP docketing/database software in particular.
- At least (2) year of solid patent prosecution experience working with the USPTO and foreign patent offices.
- Strong data management and proofreading skills.
Preferred Qualifications
Specialist II:
- Excellent verbal and written communication skills are strongly favored. Ability to work cooperatively (with a staff of attorneys, patent agents, paralegals and other support staff) in a fast-paced, dynamic team environment and communicate effectively with visitors, outside counsel, and NREL employees, including educating other NREL employees on IP-related issues.
- Ability to effectively collaborate with, form strong working relationships with, learn from, and communicate frequently and respectfully with all levels of NREL personnel.
- Skilled with The IP Management System from Clarivate.
- Professionalism, enthusiasm, and positivity, as well as a desire for constant learning and improvement.
- Ability to share successes and teach or learn from others as necessary for the betterment of the team.
- Strong interest in the laboratory’s mission.
- Desire to take on any task necessary to achieve office goals.
- Demonstrates pride in work product and ownership of work responsibilities.
- Associates or Bachelors Degree Preferred.
Specialist III:
- Same preferences as the Specialist II but should have 4 years of experience and Highly Skilled with The IP Management System from Clarivate.
- Bachelors Degree Preferred.
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Job Application Submission Window
The anticipated closing window for application submission is up to 30 days and may be extended as needed.
Annual Salary Range (based on full-time 40 hours per week)
Job Profile: Specialist III / Annual Salary Range: $63,600 - $104,900 Job Profile: Specialist II / Annual Salary Range: $55,400 - $91,400 NREL takes into consideration a candidate’s education, training, and experience, expected quality and quantity of work, required travel (if any), external market and internal value, including seniority and merit systems, and internal pay alignment when determining the salary level for potential new employees. In compliance with the Colorado Equal Pay for Equal Work Act, a potential new employee’s salary history will not be used in compensation decisions.
Benefits Summary
Benefits include medical, dental, and vision insurance; short*- and long-term disability insurance; pension benefits*; 403(b) Employee Savings Plan with employer match*; life and accidental death and dismemberment (AD&D) insurance; personal time off (PTO) and sick leave; paid holidays; and tuition reimbursement*. NREL employees may be eligible for, but are not guaranteed, performance-, merit-, and achievement- based awards that include a monetary component. Some positions may be eligible for relocation expense reimbursement. Limited-term positions are not eligible for long-term disability or tuition reimbursement.- Based on eligibility rules
Drug Free Workplace
NREL is committed to maintaining a drug-free workplace in accordance with the federal Drug-Free Workplace Act and complies with federal laws prohibiting the possession and use of illegal drugs. Under federal law, marijuana remains an illegal drug.
If you are offered employment at NREL, you must pass a pre-employment drug test prior to commencing employment. Unless prohibited by state or local law, the pre-employment drug test will include marijuana. If you test positive on the pre-employment drug test, your offer of employment may be withdrawn.
Submission Guidelines
Please note that in order to be considered an applicant for any position at NREL you must submit an application form for each position for which you believe you are qualified. Applications are not kept on file for future positions. Please include a cover letter and resume with each position application.
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EEO Policy
NREL is an Equal Opportunity/Affirmative Action Employer. All qualified applicants will receive consideration for employment without regard basis of age (40 and over), color, disability, gender identity, genetic information, marital status, domestic partner status, military or veteran status, national origin/ancestry, race, religion, creed, sex (including pregnancy, childbirth, breastfeeding), sexual orientation, and any other applicable status protected by federal, state, or local laws.
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