Senior IP Specialist

1 month ago

Pittsburgh, Pennsylvania, United States Matthews International Corporation Full time

Job Summary

The Senior IP Specialist will play a critical role in developing and implementing efficient and sustainable processes for managing complex innovation information and data. This position will work closely with the Matthews' legal team to ensure the effective management of IP assets, litigation, and related documents and deadlines.

Key Responsibilities

  • Respond to various IP requests from business teams, including patent FTOs and trademark clearance searches, portfolio management, litigation, enforcement, licensing, and other general IP issues.
  • Engage with outside counsel firms, including task assignment, coordinate searches, filings, and deadline management.
  • Implement process improvement related to vendor billing, budget tracking, and forecasting.
  • Develop and administer workflows between R&D, business, and outside counsel.
  • Implement technology solutions to the practice of in-house IP function, including exploration of alternative service providers and tools for automation.
  • Assist with preparing standard forms and templates for IP workflows.
  • Work with counsel to develop training materials for the business on compliance and IP.
  • Coordinate correspondence and meetings between outside counsel and in-house stakeholders.
  • Administer IP Committee meetings and Project Stage-gate Reviews.
  • Develop integration efforts to in-take new IP portfolios that result from acquisitions and work with outside counsel to maintain integrity of IP portfolio.
  • Oversee legal responsibilities regarding dissolutions, mergers, and acquisitions.
  • Gather and analyze research data, such as statutes, decisions, and legal articles, codes related to IP.
  • Organize and manage documents and information available in electronic IP management system for maintenance and informational purposes.
  • Draft and file entity formation, dissolution documents, fictitious name registration, and organizational documents, including articles of incorporation and first board resolution.
  • Oversee the maintenance of paper or electronic filing system and database for all ongoing and completed cases, all pending or threatened litigation, and of original minute books for all US legal entities of the company.

Requirements

  • Paralegal Certificate/Diploma or Bachelor's Degree in Paralegal studies is required.
  • 6+ years of previous in-house paralegal experience in addition to 2+ years of legal operations experience.
  • High degree of attention to detail and the ability to multi-task and manage time efficiently with minimal oversight.
  • In-depth knowledge of patent and trademark processes.
  • Must be a process-oriented self-starter and problem solver, with a high degree of proficiency in MS Office Suite, Outlook, and Internet applications.
  • Strong analytical, prioritizing, interpersonal, problem-solving, presentation, budgeting, project management, and planning skills.
  • Exceptional verbal and written communication skills, including analysis, interpretation, and reasoning.
  • Solid understanding and application of mathematical concepts.
  • Ability to develop and maintain collaborative relationships with peers and colleagues across the organization, as well as internal and external clients.
  • Ability to work well autonomously and within a team in a fast-paced and deadline-oriented environment.
  • Ability to work with and influence peers and management.
  • Self-motivated and proactive with critical attention to detail, deadlines, and reporting.

Physical Aspects/Work Environment

Regularly required to stand; walk; sit; talk, hear, and see. Occasionally lift and/or move up to 10 pounds.

Reasonable accommodations may be made to enable individuals to perform the essential functions.

Matthews International is an Equal Opportunity Employer.

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