Sr. Legal Specialist, Intellectual Property

Position Summary

This role provides global innovation, patent, and trademark paralegal support to the Intellectual Property team. 

Principal Duties & Responsibilities

• Maintain patent, trademark, and domain records in IPfolio database and matter management billing system for global multi-client portfolio by creating, tracking, updating, and auditing matters in database. System administrator for IP database, including running data imports, revising system setup, and running customized reports. 
• Review all incoming daily correspondence concerning the global patent and trademark portfolio and prepare  communications to outside counsel and internal clients regarding IP instructions, activity, deadlines, and status. 
• Route formality documentation (e.g., assignments, legalization documents, POAs) for national filings of patent and trademark applications globally for execution then transmit to outside counsel. 
• Assist Marketing Counsel with review of marketing collateral for all businesses, focusing on proper trademark usage. Update Marketing Guidelines for each business as needed.
• Obtain and review patent annuity and trademark renewal information and prepare documentation for obtaining and recording instructions from business clients and communicating and tracking instructions with outside counsel. 
• Assist with drafting and negotiating non-disclosure agreements, material transfer agreements, assignments, and consulting agreements.
• Assist with providing trademark portfolio analysis to assist the businesses with trademark filing decisions and  devise most cost effective filing strategies based on same.
• Support global trademark prosecution efforts by coordinating with the businesses to conduct trademark searches to clear new product names, request specimens for maintenance and determine appropriateness of said specimens according to country law.
• Prepare periodic financial analysis of patent and trademark spend, including assessing outside counsel costs, foreign associate costs and international filing costs, to provide recommendations for cost savings and value maximization. 
• Assists with offering of patent applications or issued patents to company’s inventors in Germany.
• Provide IP due diligence support for M&A activity to verify accuracy of data provided by potential target companies and aid with the assignment of acquired rights.
• Provide divesture support regarding preparing IP schedules, gathering matter deadlines, and assisting new IP owners with completing documentation necessary to transfer IP matters to new applicant by reviewing the documentation, requesting correction, and facilitating the execution of documentation necessary to effect transfer of rights.

Education, Specialized/Technical Knowledge or Required Skills

Required: 

• Minimum of a Bachelor’s degree with a preferred focus on Legal and business. Finance/accounting background beneficial.  
• Minimum 5 years’ experience as a U.S. and foreign patent and trademark prosecution  (Intellectual Property) paralegal. 
• Solid knowledge of IP database system administration. 
• Strong computer and internet research skills: Word, Excel, PowerPoint, and Outlook 
• Experience with trademark search engines, preferably Corsearch 
• Must have outstanding organizational skills, keen attention to detail, and ability to multitask and prioritize projects which at times seem equal in importance. 
• Ability to work well with all levels of internal management, staff, and external partners 
• Excellent communication skills, strong analytical thinker, flexibility, and a good team player. 
• Must be able to deal with sensitive and confidential information in a discrete, mature, and responsible manner.