Job Description

Company:

Qualcomm Incorporated

Job Area:

Legal Group, Legal Group > Legal Specialist

General Summary:

The IP Legal Specialist, Senior will support the patent prosecution team by working closely with patent attorneys/agents and interacting with outside legal counsel and foreign associates. Responsibilities include:

• Preparing, filing, and prosecuting patents with the U.S. Patent and Trademark Office (USPTO) using ePCT. File PCT and U.S. applications electronically through Patent Center.
• Manage all related prosecution documents for US and PCT applications. This includes corresponding with foreign associates on foreign prosecution and timely reporting of official correspondence.
• Work with internal attorneys, agents, and international law firms utilizing knowledge of U.S. and foreign patent rules and requirements to respond to office actions, complete formalities, and provide all materials and support. Monitor and ensure all deadlines are met.
• Preparing and filing various patent-related documents such as provisional, non-provisional, PCT, and design application transmittal papers, preliminary amendments, responses to missing parts, petitions, requests for extensions of time, information disclosure statements, notices of appeal, and paying issue fees.
• Coordinating and executing Assignments, Powers of Attorney, and Declarations.
• Managing all aspects of US, PCT, and foreign patent prosecution, including drafting formality documents, attending to document legalization, and complying with priority document requirements.
• Contributing to administrative projects to uphold the highest legal and ethical standards in the IP Department.
• Processing patent-related emails from the IP team and US and foreign patent counsel.
• Updating patent deadlines, entering commentary on their status, and removing completed deadlines upon confirmation of filing.
• Preparing, distributing, and updating docket reports for attorneys/agents as requested.
• Collaborating with attorneys/agents to track and ensure timely compliance with deadlines.
• Developing best practices and job aids to maintain a high-functioning IP Department.
• Performing additional duties as assigned.

Required Skills

• Both in-house OR private practice law firm experience required.
• Skilled in USPTO prosecution procedures, rules, and forms.
• Solid knowledge of U.S. and international patent filing procedures and rules.
• Supreme Docket Management, time management and organization skills.
• Impeccable multi-tasking and prioritization in a fast-paced environment with close attention to detail, accuracy, and timeliness.
• Skilled in exhibiting professionalism and composure in stressful situations and in meeting short deadlines.
• Ability to read, understand, and extract relevant information accurately from legal documents.
• Solid skills in Microsoft Office applications, including intermediate to advanced skills using Word and Excel.

Technologies

• Must have strong aptitude for computer software application programs and working knowledge of applicable software programs for carrying out patent prosecution duties, including word processing, spreadsheets, data
• bases, patent and trademark filing programs (USPTO e-filing, e-PCT, PCT-Safe),online services (e.g., USPTO, records management systems, and docketing programs.
• Expertise in using computer databases and web-based platforms
• Strong familiarity with the USPTO website and other US and foreign patent internet sites and tools
• Knowledge and extensive experience using ePCT. File PCT and U.S. applications electronically through Patent Center.
• Experience with Microsoft Office (especially Excel), Adobe Acrobat Professional and Visio

Minimum Qualifications:

An international technology company leader in driving innovation and developing intellectual property and one of the world's most productive Intellectual Property Departments has an opportunity within its Operations team. The ideal candidate will play a crucial role in helping to drive department initiatives and support operations planning activities. The position is ideally suited for a detail orientated professional looking to work in a collaborative, cross-functional department.

Responsibilities may include, but are not limited to:
• Reviewing a high volume of invoices comparing against internal procedures to ensure compliance
• Monitoring and managing docketing activities relating to quality reviews of patent correspondence, including global portfolio change requests and inventor information updates
• Monitoring and managing annuity activities relating to payments and due dates
• Audit support including generating reports from multiple systems (home grown and standard), manipulating, organizing, reviewing data, and providing analysis
• Assisting in the execution of the IP Department inventor awards program

A successful candidate for this position will have excellent time management, attention to detail, and general resourcefulness required to make sound judgements and decisions.

Qualifications

• Outstanding oral and written communication skills and presentation capabilities as well as attention to details
• Ability to manage multiple projects and work effectively as a team
• Thorough knowledge of US and foreign patent prosecution, including deadlines and all forms of patent documents
• Expertise with IP management system or other patent docketing databases
• Expertise in using computer databases and web-based platforms
• Ability to independently oversee patent docketing matters, patent prosecution and related projects, and work collaboratively with other personnel at Regeneron
• Ability to handle multiple complex docketing matters and see projects through to conclusion
• Familiarity with the USPTO website and other US and foreign patent internet sites and tools
• Experience with Microsoft Office (especially Excel) and Adobe Acrobat Professional

Principal Duties and Responsibilities:

• Manages multiple medium to large sized and/or complex dockets, portfolios, investigations, transactions, and/or litigations across the life cycle to support Qualcomm's obligations with minimal guidance.
• Leverages knowledge of relevant legal framework as well as Qualcomm policies, practices, resources, systems, and tools related to one's area to provide legal support to department and other legal personnel.
• Analyzes, interprets, executes, and fulfills requests to meet obligations based on in-depth knowledge of one's legal area or business function.
• Drafts, files, produces, reviews, and/or preserves work product in fulfillment of Qualcomm's obligations with little to no guidance.
• Researches, collects, and reviews data from various resources to obtain necessary information and documents; helps junior team members do the same.
• Accurately enters, analyzes, and manages legal data, runs queries, and locates and extracts information from databases with close attention to detail; helps junior team members do the same.
• Builds and maintains collaborative partnerships with internal and/or external stakeholders (e.g., in-house attorneys, outside counsel, legal analysts) with minimal guidance to understand needs, share updates, and address issues.
• Follows processes and approaches to accomplish work and recognizes ways to improve existing ones.
• Manages individual project priorities, deadlines, and deliverables with supervision.
• Makes sound, ethical, and timely decisions, solicits guidance from senior team members as needed.

To all Staffing and Recruiting Agencies: Our Careers Site is only for individuals seeking a job at Qualcomm. Staffing and recruiting agencies and individuals being represented by an agency are not authorized to use this site or to submit profiles, applications or resumes, and any such submissions will be considered unsolicited. Qualcomm does not accept unsolicited resumes or applications from agencies. Please do not forward resumes to our jobs alias, Qualcomm employees or any other company location. Qualcomm is not responsible for any fees related to unsolicited resumes/applications.

EEO Employer: Qualcomm is an equal opportunity employer; all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, Veteran status, or any other protected classification.

Qualcomm expects its employees to abide by all applicable policies and procedures, including but not limited to security and other requirements regarding protection of Company confidential information and other confidential and/or proprietary information, to the extent those requirements are permissible under applicable law.

Pay range:

$40.27 - $60.41

The above pay scale reflects the broad, minimum to maximum, pay scale for this job code for the location for which it has been posted. Even more importantly, please note that salary is only one component of total compensation at Qualcomm.  We also offer a competitive annual discretionary bonus program and opportunity for annual RSU grants (employees on sales-incentive plans are not eligible for our annual bonus).  In addition, our highly competitive benefits package is designed to support your success at work, at home, and at play. Your recruiter will be happy to discuss all that Qualcomm has to offer!

If you would like more information about this role, please contact Qualcomm Careers.

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