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Senior Paralegal – Patents

Req ID 94493BR Job category Legal Countries (State/Region) South East Location United Kingdom - South East - Sunbury Apply now

Role synopsis

To manage domestic, foreign and international patent administration and formalities activities (i.e., patent filing, prosecution, and maintenance) in support of BP’s intellectual property needs in relation to the acquisition and maintenance of BP’s patent rights. To manage a global complex patent docket, assisting a team of attorneys in resolving routine legal issues with minimal or no supervision. To manage and reduce risk and cost for a number of patent activities such as the acquisition and maintenance of BP’s patent rights.

Key accountabilities

Manage domestic, international and foreign patent administration and formalities activities (i.e., patent filing, prosecution, and maintenance)in support of BP’s intellectual property needs – filing of patent applications, prosecution of patent applications, validation of EP patent applications, filing of utility models, registration of transfer of rights, fee payments, and notarization and legalization procedures with minimal or no supervision.

Interact with UK Intellectual Property Office, European Patent Office, World Intellectual Property Office) and other foreign patent offices with respect to administrative matters, interact with outside counsel with respect to formalities issues, instruct foreign law firms as appropriate, and manage all documents / correspondence in accordance with departmental practice; resolving the legal issues with minimal or no supervision; and working in a timely manner to meet deadlines.

Lead portfolio reviews with clients to ensure those clients’ portfolios are closely aligned with their strategy.

Prepare and submit legal documents compliant with legal requirements for each jurisdiction and for GPTL patent practice such as powers of attorney and specific authorisations to third parties; patent transfer deeds; intercompany assignments and worldwide assignments; and arrange for the legalisation and notarisation of them in line with country-specific legal guidelines with minimal or no supervision or intervention from the attorney.

Manage patent attorney dockets and maintain the patent and invention disclosure databases. From government notifications (national and international) and legal correspondence, capture accurately the deadlines and requirements for legal submissions; keep docket current; prepare some initial drafts of response to some office actions for review by the attorney and support the attorneys in the filing of submissions to meet deadlines.

To provide legal expertise and technical recommendations in support of large transactions/ divestments and also in the acquisition of patents. Handling complex pre filing issues that arise including security clearance; evaluating whether inventors and BP have the right to file; evaluating instructions given in respect of inventors and verification of attorneys’ instructions.

Represents Support team at GPTL Best Practice or GPTL Transaction Team Meetings, actively contributing to agenda for drive for simplification and harmonisation of processes and procedures globally. Leading sub-teams for implementation of best practice

Essential Education

Qualified paralegal (CIPA qualified or equivalent)

Essential experience and job requirements

  • Previous experience in patent administration and formalities
  • Previous experience of working in law firm, or in-house legal team with patent attorneys
  • Ability to prioritise workload in a fast-paced and deadline-driven environment. Planning and organisational skills.
  • Ability to work independently and with strong attention to detail
  • Demonstration of BP values and behaviours
  • Strong interpersonal skills with proven ability to work as a team, demonstrating flexibility to support others in the team at times of high volume workload to achieve the best results. Foster a one team environment

Other Requirements (e.g. Travel, Location)

There are no additional requirements. Please respond with N/A below.

Desirable criteria & qualifications

  • Commitment to continuous improvement and simplification of processes
  • Knowledge of global compliance regulations relating to Intellectual Property.
  • Ability to network and build key relationships to enhance effectiveness and to operate from a position of influence given the seniority of the individuals they interact with
  • Previous experience of working with document management system

Relocation available

No

Travel required

Negligible travel

Is this a part time position?

No

About BP

We are a global energy business involved in every aspect of the energy system. We have 75,000 employees in 80 countries, working towards delivering light, heat and mobility to millions of people, every day. We are one of the very few companies equipped to solve some of the big complex challenges that matter for the future. We have a real contribution to make to the world's ambition of a low carbon future.

The purpose of the Legal function is to provide legal services to the Group in order to further the maximisation of business opportunities and value and the minimisation of business risks and liabilities.

BP Legal lawyers and support staff work closely with their colleagues in the Businesses, Regions and Functions to deliver exceptional results in transactions, disputes and issues management.

Building on its existing strength, BP Legal has developed its strategic priorities, in line with the Group Strategy, to achieve its vision and address present and foreseeable challenges.

Segment

Corporate & Functions

Closing Date

16-Nov-2018

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