Patent Annuity Specialist
Merck
- Location
- Rahway, New Jersey, United States of America
- Employment
- Full Time
- Work model
- On-Site
- Level
- Mid
- Salary
- $87.3k – $137.4k/yr
- Posted
- 1d ago
Skills
About this role
Job Description
Position Description: The Office of General Counsel is seeking an experienced Patent Annuity Specialist to provide patent maintenance and docketing support to the Intellectual Property (IP) organization. The primary responsibility of this role is to manage the company's global patent annuity portfolio and ensure compliance with maintenance fee deadlines in coordination with the company's annuity vendor, foreign associates, and in-house attorneys. This position offers a flexible hybrid office schedule based in Rahway, NJ. Job responsibilities include, but are not limited to: Monitor complex, multi-jurisdictional patent annuity and maintenance fee deadlines. Prepare payment instructions, coordinate with third-party annuity vendor, and reconcile payment confirmations. Investigate and resolve data discrepancies identified by annuity vendor, foreign associates, and internal stakeholders. Review patent annuity and maintenance fee correspondence to help ensure intellectual property rights remain active and in good standing. Monitor changes to patent rules and maintenance requirements and update docketing procedures as necessary. Identify and correct data and records management inconsistencies using U.S. and international patent office databases, as appropriate. Generate cost estimates, metrics, and reports related to patent maintenance activities. Maintain and update annuity standard operating procedures (SOPs) to reflect current practices and process improvements. Identify inactive patent families and coordinate appropriate retention, abandonment, or revival actions. Coordinate the execution, notarization, legalization, and apostille of annuity-related powers of attorney, proof-of-ownership documents, and other intellectual property documents, as required. Support patent acquisitions, divestitures, legal entity changes, and other portfolio-related projects. Serve as the subject matter expert for patent annuity processes, providing guidance to attorneys, paralegals, and other IP stakeholders on maintenance fee requirements, annuity procedures, and related best practices. Contribute to operational excellence initiatives by identifying opportunities for process improvement and implementing approved solutions. This role is based at our headquarters site in Rahway, NJ, with a hybrid schedule of three days in-office and two days off-site/remote. This position cannot be 100% remote. Required Minimum Qualifications High school diploma or equivalent required. Associate degree or paralegal certificate preferred. Minimum of five (5) years of patent annuity experience in a law firm, corporate legal department, or in-house intellectual property organization. Strong knowledge of U.S., PCT, EP, and foreign national patent prosecution, maintenance, and docketing practices. Experience supporting global patent portfolios and coordinating activities across multiple jurisdictions. Experience with powers of attorney, certified true copies of assignments and ownership documents, and related notarization, legalization, and attestation/apostille processes. Advanced proficiency with IP docketing and annuity management systems. Advanced proficiency with U.S. and international patent office databases and online systems, including USPTO Patent Center, EPO, and WIPO. Advanced proficiency in Microsoft Office applications, including Outlook, Word, and Excel. Exceptional attention to detail, accuracy, and analytical skills. Strong written and verbal communication skills, including the ability to communicate complex legal and procedural concepts clearly and effectively. Effective organizational, project management, and time management skills, with the ability to manage competing priorities and consistently meet deadlines. Ability to work independently on routine assignments and complex projects while exercising sound judgment regarding when to seek attorney guidance. Demonstrated discretion in handling confidential and sensitive information, with a