LIXIL / American Standard Brands
IP Paralegal
Piscataway, New Jersey (USA)
Job ID: 2016-1409
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Overview

 

This position will provide support to the Assistant General Counsel of IP. A specialized paralegal with experience in docketing, patent prosecution, USPTO filings and all aspects of Intellectual Property is needed to manage the day-to-day demands of IP within the legal department.

 

Responsibilities

 

Maintains accurate patent prosecution docket including processing mail to/from USPTO, foreign associates and external US counsel; Files patent applications, documents, IDS, and prosecution matters with USPTO; Provides instructions to external counsel and/or handles IP filing matters including PCT, national/regional stage, translations, legalization and validations; Runs periodic reports including docket reports, annuity reports, patent family reports; Assists with preparation of patent portfolio reviews; Coordinates with counsel and internal customers to meet deadlines; Searches for patent families and related applications; Obtains domestic and foreign prosecution histories; Evaluates and coordinates onboarding of various IP vendors; Receives and indexes opinions of counsel; Manages all annuity payments; Assists with billing and budgeting matters; Maintains contract database for IP agreements; Assists with preparation, distribution and collection of legal documents including contracts, memoranda, assignments, PoA, declarations from/to counsel and internal customers; Assists with developing and supporting working IP process and procedures both internally and externally.

 

Qualifications

 

  • Bachelor’s degree preferred, paralegal certificate, more than 6 years of working experience as patent paralegal including managing docketing system, managing patent and contract databases, working with outside counsel and e-filing at USPTO. (Law firm experience preferred)
  • Strong organizational skills with the ability to accomplish tasks within agreed upon timeframes through effective prioritization
  • Able to work independently and a be team player to complete tasks and respond to department requests and to collaborate with others (on different locations and cultural background) to identify solutions
  • Excellent follow-up skills with the ability to organize applicable department timelines and follow up with internal and external customers
  • Excellent attention to detail and strong proofreading skills
  • Ability to handle multiple projects with changing priorities, meet critical deadlines, work within a team, and demonstrate initiative
  • Ability to work independently under limited supervision
  • Strong work ethic and accountability
  • Strong computer skills, including Microsoft Office (Excel, Word and PowerPoint)