Senior IP Paralegal

Senior IP Paralegal

Job Overview

Location
Bridgewater, New Jersey
Job Type
Full Time Job
Job ID
43294
Date Posted
4 months ago
Recruiter
Clara Konk
Job Views
153

Job Description

Core Responsibilities:

  • Support preparation, prosecution and maintenance of a global IP portfolio (patent, trademark, and domain names), with primary focus on our trademark and domain name portfolios 
  • Collaborate with the business and in-house IP attorneys to prepare, file, and prosecute new trademark applications including agreeing scope of goods and services and geographies in which to pursue such applications
  • Liaise with agents and in-house IP attorneys to facilitate the preparation, prosecution and filing of new patent applications, including obtaining priority documents, POAs and assignments
  • Facilitate trademark renewal payments/instructions; secure the information required to prove trademark usage
  • Review IP correspondence and docket and/or close associated due dates; prepare docket reports 
  • Prepare, facilitate and/or direct file patent applications in the PCT, US, and foreign jurisdictions
  • Manage and track Invention Disclosures; prepare patent documents (including shell responses, assignments, IDSs, etc) for filing with the US Patent and Trademark Office (“USPTO”); and facilitate payment of patent annuities
  • Provide basic administrative support including generating IP reports and materials required to support business meetings, maintaining electronic files, booking travel, processing expense reports, etc.
  • Help manage IP legal budget and process invoices for the IP legal department, including creating new billing matters and setting up new vendors in electronic billing system (Legal Tracker) and fielding IP legal billing and invoice questions
  • Proactively promote and recommend opportunities to simplify IP team processes and procedures to promote simpler and more efficient ways of working, lower costs and minimize risk associated with procuring and managing the IP portfolio
  • Provide operational support to the IP Legal team (i.e., manage day-to-day operations)

Qualified candidates:

  • Must have an Associate’s degree or Paralegal certificate (or similar) with 8+ years of combined law-firm and corporate legal experience supporting a global IP portfolio, including interacting with global agents and internal clients
  • Must have experience supporting the preparation and prosecution of a global IP portfolio, inclusive of electronic filings.
  • Must have experience managing a trademark portfolio, including docketing due dates and paying trademark renewals
  • Must have experience docketing IP due dates and facilitating payment of annuities/renewals.
  • Must have experience using online databases and internet resources (e.g. USPTO, EPO, CorSearch, Questel, etc).
  • Will preferably be proficient working in the CPI docketing and Legal Tracker e-billing systems 
  • Must be well organized with excellent attention to detail and excellent verbal and written communication skills.
  • Must be able to work independently and collaboratively to manage multiple, diverse projects in a fast-paced and dynamic environment, and proactively communicate with the Chief IP Counsel and other legal team members when appropriate.
  • Must be a proactive problem solver and exceptional team player
  • Must be proficient using Excel, MS word, Powerpoint, and Adobe. 
  • Must be fluent in English

Job ID: 43294

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