Temp-to-Hire IP Paralegal

Special Counsel is recruting an experienced IP Paralegal for a West-side company. The IP Paralegal will assist with the management of the company's worldwide intellectual property portfolio.  

Responsibilities:

  • Review and revise non-disclosure agreements and IP provisions in terms and conditions and commercial agreements, in accordance with internal guidelines
  • Process incoming/outgoing patent and trademark correspondence (US and non-US) and update matter management software as needed
  • Open/maintain IP matters in matter management software
  • Maintain overall quality control, daily maintenance, and operation of patent and trademark portfolios from prosecution through post-grant activity
  • Support and assist internal counsel with communications to businesses relating to patent and trademark prosecution updates and requests for instructions
  • Use USPTO searchable databases (PAIR, TESS)
  • Process new invention disclosures, coordinate next steps with patent attorneys and businesses as needed
  • Coordinate patent review meetings with businesses, prepare materials for review, including patent-to-product mapping and upcoming annuities, review active invention disclosure records, foreign filing decisions, high-priority projects, year-to-date spend/budget details, etc.
  • Assist with preparation of IP dashboards and other periodic updates for presentation to management, including summaries of IP activities and analysis of spend/budget
  • Review/process incoming invoices in e-billing software, assist in preparing and managing annual IP budget
  • Manage IP-related licensing activities, including coordinating royalty receipt and payments, and providing reports to third parties
  • Monitor improper online use or infringement of IP
  • Support implementation, launch and tracking of ethics, compliance and IP training to employees through the company Learning Management System (LMS)
  • Qualifications:

  • General knowledge of different type of IP protection, including knowledge of filing requirements, prosecution requirements, annuity laws, renewal data, and expiration data
  • At least 5-7 years experience as an Intellectual Property Paralegal, or equivalent, with both law firm and in-house experience, highly preferred
  • Bachelor’s degree, associates degree, or paralegal certificate preferred
  • Familiar with patent and trademark terminology, and patent and trademark record maintenance.   
  • Strong organizational skills with the ability to accomplish tasks within agreed upon time frames through effective prioritization
  • Writing and communication skills for concise and easy-to-understand instructions and responses to internal clients and external counsel
  • Able to work independently with minimal supervision, and collaboratively as a team player.
  • Proficient knowledge of software including Microsoft Office (Word, Excel, and PowerPoint), familiarity with Thomson Reuters Legal Tracker e-billing software is a plus
  • Excellent attention to detail
  • Strong work ethic and accountability
  • Must be able to work remotely as needed, with reliable internet connectivity
  • Would you like to learn more about the Temp-to-Hire Intellectual Property Paralegal position that Special Counsel is recruiting for in Westlake, Ohio?  If so, then please submit your resume below.  Or, visit our website at www.specialcounsel.com to apply or consider other available opportunities with us.



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