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Patent Annuity Specialist

MSD

Rahway, NJHybridPosted 12 days ago$87,300.00 - $137,400.00
Full TimeSenior LevelCorporate FunctionsPharmaceutical
Original posting ↗

Summary

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 description

Job Responsibilities

  • 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.

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 high degree of professionalism and integrity.
  • Results-oriented with a demonstrated ability to deliver high-quality work in a timely manner.
  • Strong interpersonal and collaboration skills, with the ability to build effective working relationships across functions and levels of the organization.
  • Resilient and adaptable, with the ability to thrive in a fast-paced, high-volume environment and effectively manage change.
  • Willingness to embrace and support new processes, technologies, and ways of working.
  • Notary Public Commission, or the ability to obtain a commission within a reasonable period following hire.

Preferred Experience and Skills

  • Experience supporting pharmaceutical, biotechnology, life sciences, or other complex technology patent portfolios.
  • Prior experience with Clarivate's The IP Management System (TIPMS), IPManager, First-to-File, or similar intellectual property management systems.
  • Experience collaborating with third-party annuity service providers and foreign associates on global patent maintenance activities.
  • Experience participating in patent acquisitions, divestitures, legal entity changes, or other IP portfolio transition projects.

Requirements

  • 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
  • Effective organizational, project management, and time management skills
  • Ability to work independently on routine assignments and complex projects
  • Demonstrated discretion in handling confidential and sensitive information
  • Results-oriented with a demonstrated ability to deliver high-quality work in a timely manner
  • Strong interpersonal and collaboration skills
  • Resilient and adaptable in a fast-paced, high-volume environment
  • Willingness to embrace and support new processes, technologies, and ways of working
  • Notary Public Commission, or the ability to obtain a commission within a reasonable period following hire
  • Experience supporting pharmaceutical, biotechnology, life sciences, or other complex technology patent portfolios
  • Prior experience with Clarivate's The IP Management System (TIPMS), IPManager, First-to-File, or similar intellectual property management systems
  • Experience collaborating with third-party annuity service providers and foreign associates on global patent maintenance activities
  • Experience participating in patent acquisitions, divestitures, legal entity changes, or other IP portfolio transition projects

Benefits

  • Medical, Dental & Vision
  • Retirement benefits
  • 401(k)
  • Paid holidays
  • Vacation
  • Compassionate leave
  • Sick days
  • Annual bonus
  • Long-term incentive

Company overview

MSD, known as Merck Sharp & Dohme outside the United States and Canada, is a global research-intensive biopharmaceutical company headquartered in Rahway, New Jersey. Founded in 1891, the company has established itself as one of the world's leading pharmaceutical corporations with a rich history spanning over 130 years. MSD operates as the international division of Merck & Co., Inc., focusing on the discovery, development, manufacturing, and marketing of innovative medicines, vaccines, biologic therapies, and animal health products. The company's extensive portfolio includes groundbreaking treatments in oncology, infectious diseases, cardiology, diabetes, and vaccines, with notable products such as Keytruda (pembrolizumab) for cancer immunotherapy, Gardasil for HPV prevention, and Januvia for diabetes management. MSD maintains a strong commitment to research and development, investing significantly in scientific innovation to address unmet medical needs worldwide. With approximately 75,000 employees globally, the company operates through four main segments: pharmaceuticals, animal health, healthcare services, and strategic alliances. MSD's mission centers on using leading-edge science to save and improve lives around the world, guided by the principle that medicine is for people, not profits.

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