Senior IP Specialist

3 days ago

Pittsburgh, Pennsylvania, United States Matthews International Full time
Job Summary

The Senior IP Specialist will work closely with the Matthews' legal team to develop efficient and sustainable processes for managing complex innovation information and data. This role is responsible for various critical intellectual property support functions, including managing IP assets, litigation, and related documents and deadlines, as well as fostering outside counsel relationships and collaborating on high-priority projects related to IP management and reporting.

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 improvements 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 resulting from acquisitions and work with outside counsel to maintain integrity of IP portfolio.
  • Oversee legal responsibilities regarding dissolutions, mergers, and acquisitions as related to IP.
  • 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.
Qualifications/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 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 willingness to go the extra step to keep matters advancing.
  • Must have experience working directly with business partners and R&D, marketing, compliance, and finance teams.
  • Must have experience in process improvement.
  • Experience managing a global trademark docket of no less than 500 marks, where the marks are with our outside counsel firms.
  • Experience managing a global patent docket of no less than 1000 applications, where the applications are filed with our outside counsel firms.
  • Occasional travel either locally, nationally, and/or internationally may be required.
  • Knowledge of compliance and IP law and in-house/law firm experience is essential.
  • Experience with implementing and managing IP legal database systems (e.g., IAMIP, AppColl, CPA, Clarivate).
  • High degree of proficiency in MS Office Suite, Outlook, and Internet applications.
  • Strong analytical, prioritizing, interpersonal, problem-solving, presentation, budgeting, project management (from conception to completion), 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.

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