Patent Operations Manager - Intellectual Property Management Solutions Business

Role Details :

The Patent Operations Manager will be primarily responsible for US patent paralegal support functions in respect of multiple customers. The role also requires overseeing paralegal support staff, administrative assistants and docketing specialists based in India. Quality control and direct, hands-on supervision of paralegal and administrative processes connected with filing and prosecuting patent applications until grant and post-grant maintenance of issued patents are key responsibilities. The candidate is expected to function as a mentor and a subject matter expert (SME) for a large team in the IPMS (Intellectual Property Management Solutions) business unit in India. The candidate should be able to manage service delivery, client relationships and internal stakeholder management. Should have the ability to achieve best in class service levels and deliver continuous improvement.

The role requires the candidate to have first-hand knowledge of patent prosecution at the USPTO, European Patent Office, though the PCT system of WIPO and other main national IP offices.

Acting as the primary customer contact for US based clients relative to paralegal, docketing and admin related projects will be an important aspect of this role. Client relationship management (CRM), in general, and oversight and management of billing and other administrative functions connected with CRM are functions the candidate will be expected to perform.

Job Responsibilities :

Patent Operations Manager will hands-on coach, train and mentor paralegal support staff in all aspects of the paralegal part of US patent preparation and prosecution, and in particular the following:

a) 100% compliance of docket deadlines for one or more customers in relation to their patent applications portfolio

b) Coordinating patent prosecution matters with the office of the Chief IP officer, Outside Counsels and in-house paralegals of the Customers

c) Overseeing paralegal, docketing and admin functions of IPMS team (India)

d) Overseeing Service Delivery metrics across different clients. Converting client deliverables into KPIs for the delivery team.

e) Subject matter oversight and supervision on matters concerning IDSs at the USPTO, first and supplementary IDSs, Citation Matrix, online IDS filing, patent watch, post allowance review, issued patent proofreading and such other paralegal and admin functions.

f) Import training on paralegal functions to the team in India.

g) Develop training materials and offer training to Clairvolex employees in relation to US paralegal functions

h) Train, coach and mentor un-trained or trainee paralegals and docketing specialists.

i) Offer technical support, subject matter expertise, and solutioning support to sales and business development team

j) Participate in process building, process innovation, automation and similar activities directed at organization development.

k) Quality control of the work-products generated by the IPMS team

l) Help in establishing the Clairvolex brand globally, and in that relation the management may task the candidate to attend conferences, networking events, road-shows and also carry out regular visits to various potential and existing client facilities.

m) Provide every possible sales and marketing support including by offering online presentations, attending conference calls to render presentations on service lines and related processes, making client specific proposals, and obtaining client references (if and when specifically required).

n) Work with stakeholders across the organization to define the roadmap for growing client relationships and accounts

o) When required travel to client facilities for on-site reviews

p) When required attend potential customer presentations

q) Attend client sales and marketing meetings, internal sales meetings, Clex strategy meetings when asked for

r) Manage any special projects that Clairvolex IP Services Business Head will require from time to time.

Other Details :

Educational/professional qualifications: Experience in managing US Patent Paralegal operations. Must possess a degree in patent law/paralegal domains.

Experience : 8-10 years with at least 6 years as a Paralegal Operations Manager in an IP law firm or of a large in-house paralegal operation of technology company or a company in India providing patent paralegal support activities to U.S. clients . Should have handled a large volume of patent preparation and prosecution matters relating to electrical, communications, semi-conductors, microprocessors and computer software related inventions. Should have previously handled multiple client relationships.

Skills :

Strong leadership, communication, influencing and negotiation skills

Managing a team of 30-40 support staff including 3-4 team leaders.

Good communication skills to interact with Senior Management and clients

Process-oriented with excellent analytical skills

Client relationship focused mindset

Should be able to work with a sense of urgency and attention to detail