Jobs · Legal

Intellectual Property Paralegal

Chamberlain Group · Oak Brook, IL · 3 wk ago
Legal$86k–$163k/yrFull-time

Job Responsibilities

  • Design, implement, and own the company’s internal patent docketing system, including creating workflows, processes, and controls for tracking global patent assets throughout their entire lifecycle, with minimal supervision
  • Establish communication procedures with outside patent law firms and serve as a primary point of contact with the law firms to facilitate accurate record keeping within the IP management system
  • Institute internal procedures for opening, updating, auditing, and closing patent matters in the IP management system to ensure data accuracy, consistency, and long-term portfolio integrity
  • Independently track, monitor, and docket critical deadlines such as patent prosecution milestones, maintenance fees, and annuities using the company’s IP portfolio management system
  • Generate standard and ad hoc reports regarding portfolio status, deadlines, and metrics for internal stakeholders
  • Manage the shared Legal/IP e-mail inbox and triaging incoming communications from both internal stakeholders and external counsel, including identifying communications that require attorney review
  • Communicate with internal inventors to assist with capturing invention disclosures, execution of formal documents, and collection of information required for patent filings

Minimum Qualifications

  • Education/Certifications: Bachelor's Degree
  • Experience: 5+ years of experience as an Intellectual Property Paralegal, with a strong emphasis on utility and design patent prosecution, preferably in an in-house legal department
  • Knowledge, Skills, and Abilities: Understanding of USPTO patent practice; hands-on experience using an IP docketing or portfolio management system to track intellectual property assets across their lifecycle; experience coordinating with outside counsel as well as cross-functional internal stakeholders; exceptional organizational skills with strong attention to detail, time-management abilities, and written and verbal communication skills

Preferred Qualifications

  • Education/Certifications: Paralegal certificate
  • Experience: Knowledge, Skills, and Abilities: Experience with Symphony® / MaxVal® IP portfolio management systems; experience with foreign patent practices; experience with trademark prosecution and docketing; familiarity with global patent filing and prosecution processes across multiple jurisdictions

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