Ip Paralegal

We're looking for a IP Paralegal to work with one of the nation's most respected healthcare companies. They need someone to work independently in the preparation of all necessary documentation for the filing of patent and trademark applications in desired countries and must possess a good understanding of the various requirements throughout prosecution to grant/issuance and any PTO post grant/issuance procedures for all major countries in which the client generally submits its applications for patent and trademark protection.

Key Responsibilities

• Maintain a docket for a large multinational portfolio of patent and trademark registration and applications and execute any needed actions in advance of due dates/deadlines.
• Maintain electronic files corresponding to that portion of client’s patent and trademark portfolio being managed by the position.
• Manage Outside Counsel and Foreign Associates and provide needed documentation in fulfilling client’s filing, prosecution, and opposition instructions. 
• Manage instructions and secure payment of annuity and maintenance fees.
• Assist with freedom to operate activities incl. gather and organize material and references.

• Execute trademark clearance search strategies formed after consultation with IP counsel. Review clearance results with IP Counsel and communicate results to Business Clients.
• Review weekly communications from client’s trademark watch service.
• Receive, review and triage invoices and forwards approved invoices for final settlement.
• Prepare reports relating to patents and trademarks as required by the circumstances.
• Become an integral team member of client’s global patent and trademark department and provide and seek support when needed to/from other team members.
• Develop understanding of internal policies and systems and become proficient in getting things done in this environment.
• Identifying issues relating to work streams, docketing, deadlines, documentation, retention, databases, files, etc., take ownership and drive to develop solutions to improve systems, procedures, policies etc., individually and through teams.
• Develop an understanding of client businesses and their respective products.
• Collaborate and cooperate with attorneys to prepare patent and trademark portfolio schedules for Business Development mergers, acquisitions and divestitures and assist with analyzing information about potential targets and their patent and trademark portfolios.

IMPORTANT DETAILS

Pay: $75/hr ($150,000/year if converted to permanent - the client might be open to a direct hire but would prefer temp-to-perm)

Location: Hybrid schedule at DEERFIELD, IL office (3/2)

Duration: 6+ months with it very likely to go perm

Ideal Skills & Experiences

 ·         Knowledgeable about Global Patent and Trademark Prosecution Docketing/procedural workflows for the different countries.

·         Prior work history with maintaining a Patent and Trademark Docket with the use of Docketing Software.

·         Familiarity with Patent and Trademark IPR/Opposition practices and procedures.

·         Experienced in reviewing results provided by trademark watch services and determining which trademarks may pose a risk of likelihood of confusion with client’s trademarks and communicating the risk to IP counsel.

·         Familiarity with Business Development Due Diligence – gathering/sifting important information, ability to create schedules and organize transfer documents relating to patent and trademark portfolios in acquisitions and divestitures.

·         Highly motivated and a self-starter.

·         Possessing strong Organization skills and ability to prioritize work and create and maintain order from competing demands.

·         Possessing a Focused Attention to detail.

·         Possessing ability to work independently on repetitive tasks.

·         Possessing good people skills/having the ability to get along with all levels – subordinates, peers and superiors – good client communication skills – manages reputation of self and department.

·         Ability to interface directly with inventors relating to invention records and patent applications, as well as marketing personnel to provide direction and counsel on trademark selection and clearance procedure.

·         Ability to communicate effectively with outside counsel/foreign associates, including non-routine correspondence.

·         Experienced with Microsoft Office products.

·         Paralegal Degree and 5+ years of patent and trademark experience – law firm and/or corporate.

You can apply on our website, via LinkedIn, or you can email me your resume directly at mcoughlin@hirecounsel.com (I can't promise you'll get the job, but I can promise I'll see your resume.)

About Hire Counsel

Hire Counsel is a legal staffing agency. We build connections between legal professionals and our clients, some of the nation's largest law firms and legal departments (and some of the smallest). By bringing together good lawyers with our clients, we give individuals the option to work on contract (temporary) assignments, providing them stability as we simultaneously help them land at a permanent home. Hire Counsel holds all resumes in the strictest confidence.