IP Paralegal

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IP Paralegal
Duties: Docket and process incoming/outgoing patent and trademark correspondence (US and non-US) in IP Manager docketing system. Responsible for overall quality control, daily maintenance, and operation of patent and trademark portfolios from prosecution through post-grant activity. Prepare and file patent prosecution documents for filing at USPTO and foreign patent offices, including US and PCT patent applications, Information Disclosure Statements, Declaration and Assignment documents, finalize/file office actions responses, annuity management, etc. Prepare and process trademark applications on a worldwide basis; interact directly with outside trademark counsel on prosecution matters, specimen collection, responses to office actions, etc.; conduct preliminary trademark searches in TESS; review trademark searches, opinions, and related documents; actively manage trademark renewal, opposition, cancellation, and other conflict matters. Responsible for opening/maintaining all IP matters in docketing system and financial database. Coordinate patent and trademark-related searching and inquiries with outside counsel, includes freedom-to-operate, patentability, trademark clearances, invalidity, third party trademark watches, etc. Process new invention disclosures, coordinate next steps with patent attorneys and agents, R&D, and business as needed. Coordinate quarterly 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. Prepare IP metrics scorecard for IP department, includes statistical summaries of IP activities and analysis of spend/budget for review by leadership teams. Review/process incoming invoices, manage spend/budget by project/matter. Responsible for preparing and managing annual IP budget and quarterly forecasts. Manage IP-related licensing activities, including properly identifying and tracking licensed matter in IP database, reporting licenses to AD tax department, coordinate royalty payments, and report with third parties. Support AD tax department on cost sharing projects between entities globally. Serve as an internal subject matter expert with respect to obtaining and maintaining IP protection globally including knowledge of filing requirements, prosecution requirements, annuity laws, renewal data, and expiration data.

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