Ip Paralegal

The Opportunity
Our customer, an AM global healthcare company, seeks a Senior IP Paralegal for a 6-month contract (potential to turn permanent). This will be a hybrid role in the Chicago area, with hybrid mode 3 days a week in the office.
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 the patent and trademark portfolio being managed by the position.
• Manage Outside Counsel and Foreign Associates and provide needed documentation in fulfilling filing, prosecution, and opposition instructions.
• Manage instructions and secure payment of annuity and maintenance fees.
• 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 the trademark watch service.
• Receive, review, and triage invoices and forward approved invoices for final settlement.
• Prepare reports relating to patents and trademarks as required by the circumstances.
• Become an integral team member of the global patent and trademark department and provide and seek support when needed to/from other team members.
• Identifying issues relating to work streams, docketing, deadlines, documentation, retention, databases, and files. 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.

Ideal Skills & Experiences

• Knowledgeable about Global Patent and Trademark Prosecution Docketing/procedural workflows for the different countries.
• Paralegal Degree and 5+ years of patent and trademark experience - law firm and/or corporate.
• 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 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.
• 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 procedures.
• Ability to communicate effectively with outside counsel/foreign associates, including non-routine correspondence.
• Experienced with Microsoft Office products.

Learn more at https://elevateservices.com
See more jobs at https://elevateservices.com/jobs-at-elevate/
Follow us on social media
https://www.linkedin.com/company/elevate-services
https://twitter.com/ElevateServices
Equitability and Inclusion are critical to ElevateFlex's success. As The Law Company, changing the legal business landscape, we know a diverse, inclusive work culture is at the heart of attracting, retaining, and celebrating the industry's most talented people. We empower our employees to bring their whole selves to work because we know that diversity of experience and perspective drive innovation and is simply good business.
As a strong proponent of diversity, equitability, and inclusion, ElevateFlex is committed to hiring diverse candidates from all backgrounds. We invite you to apply to become part of the ElevateFlex Team - help us change the legal business landscape and make a dent in the legal universe.