IP Paralegal

Campbell, CA

Posted: 08/19/2019 Employment Type: Contract Industry: Computer Networking Job Number: JOS000008704

This company is currently seeking an experienced IP Paralegal to join its small, dynamic legal team. This position will support the Associate General Counsel with a focus on the patent and trademark portfolios, basic vendor and contractor agreements and privacy, and will work cross-functionally with other departments throughout the organization. 

Essential Duties and Responsibilities: 

  • Interface with outside counsel to manage the dockets and due dates for the company’s patent and trademark portfolios 
  • Coordinate with annuity payment provider and outside counsel to ensure timely payment of patent annuities, trademark renewal and other maintenance fees 
  • Interface with the marketing department on information requests from outside counsel, and assist with offensive and defensive trademark conflicts worldwide 
  • Lead compliance with all IP formalities, including assignments and other documents related to patent and trademark filings, document notarization, legalization and execution by internal clients and arrange delivery of documents to outside counsel 
  • Coordinate patent review, innovation brainstorming, and IP training meetings 
  • Prepare and track patent and trademark budget forecasts and review outside counsel invoices 
  • Assist with preparation of presentations, status charts and other legal-related work products as needed 
  • Assist with IP support processes and templates, and on-going development of patent and trademark prosecution best practices, including assist with developing a patent incentive program 
  • Assist with drafting of certain vendor and contractor agreements and amendments, and route for signatures 
  • Support with data privacy and other related compliance support as needed 
  • Interact with all facets of the company and perform additional projects and administrative tasks 

Desired Skills and Experience 

  • A minimum of 5+ years of patent paralegal experience (US and foreign); familiar with US, PCT, international patent prosecution processes and deadlines; trademark experience; experience working in a start-up environment is a plus 
  • Strong computer skills, including proficiency in Microsoft Office (Word, Outlook, PowerPoint); strong Excel skills preferred 
  • Excellent writing, organizational, problem-solving, communication and analytical skills 
  • Great attention to detail and follow-through, extremely organized with strong sense of priority, urgency and commitment to deadlines 
  • Team player, willing to do what is necessary to get the job done 
  • Contract negotiation skills and data privacy experience helpful 
  • Must be a self-starter, able to handle and organize a number of tasks and stay current in knowledge of legal matters 

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