Intellectual Property Counsel – Corporation – Columbia, MO (remote possible)

April 3, 2024- US - Midwest, - US - Telecommute, Emp - Corporate (in-house), Tech - Computer Science, Tech - Mechanical, Work - Admin, Work - Copyright, Work - Licensing / Other Corporate, Work - Patent Litigation, Work - Patent Prosecution, Work - Trademark

EquipmentShare, a large corporation, is seeking an Intellectual Property Counsel to work in Columbia, MO (remote possible).

Primary Responsibilities:

Coordinate with outside counsel on various IP matters involving copyrights, patents, trademarks, and trade secrets
Advise and counsel employees in the product development teams regarding legal compliance and risk management
Advise and counsel employees on various marketing-related matters, including name-logo-slogan approval, waivers, contest language, website copy and disclaimers, etc.
Draft, negotiate, interpret, and advise employees on IP-related agreements (license agreements, joint development agreements, invention disclosures, etc.)
Negotiate, interpret, and advise employees on IP provisions in commercial agreements, such as manufacturing, SaaS, and supply agreements
Work with outside counsel to evaluate inventions to determine patentability and draft, file, and prosecute patent applications before the USPTO and foreign counterparts
Work with the relevant stakeholders to develop and write policies such as open source policy, AI policy, etc.

Skills & Qualifications:

Juris Doctor degree
Requires membership in a State Bar as an attorney qualified to practice law in the State and must remain in good standing with the State Bar including being current on any applicable Continuing Legal Education requirements
Must have 5+ years of experience as an IP attorney, including experience with counseling clients on business aspects of IP matters, with in-house experience highly preferred
Ability to operate with significant independence
-Ability to interact with people at all levels of the organization and interface effectively with leadership, internal business partners, and external partners, such as outside counsel
Ability to thrive in a high-pressure, fast-paced work environment with strict deadlines
Adaptable to growth and changes in the organization, role, and systems
Excellent organizational skills and attention to detail
Strong time management skills
Outstanding written and verbal communication skills, with the ability to articulate legal strategies and courses of action
Exceptional presentation and negotiating skills
Ability to perform complex tasks and to prioritize multiple projects

Apply online at:
https://www.equipmentshare.com/careers/openings/5856108/intellectual-property-counsel-at-columbia-mo-corporate?requestId=7886a3c2-318f-4873-8468-abd2cd92608d%3AAPAb7ITXiQMWFKLr9HwsX8n309VJcwaABA%3D%3D

Additional Info
Employer Type: Large Corporation
Job Location: Columbia, MO (remote possible)

Intellectual Property Manager – Education – Notre Dame, IN

March 20, 2023- US - Midwest, Emp - Educational, Work - Admin

The University of Notre Dame is accepting applications for a Intellectual Property Manager.

Applications will be accepted until 4/2/2023.

Standing for Innovation, De-Risking and Enterprise Acceleration, the IDEA Center is the fundamental resource for all commercialization and entrepreneurial activities at the University of Notre Dame. It provides the necessary space, services and expertise for idea development, commercialization, business formation, prototyping, entrepreneurial education and student entrepreneurial efforts. It is designed to bring the best Notre Dame faculty, staff, and student ideas and innovations to market. The IDEA Center is looking for an Intellectual Property Manager who will be responsible for the IP portfolio for all of Notre Dame Inventions as part of the commercialization team at the IDEA Center.

This position will manage the intellectual property (IP) portfolio for all of Notre Dame Inventions as part of the commercialization team. This position is responsible for the IP management of all University Owned technologies including all electrical, mechanical, civil, aerospace, biomolecular, physical, chemical, pharmaceutical, and software inventions. This position will develop and implement intellectual property strategies and will decide whether or not the University will commercialize a technology. This person is responsible for maintaining the Univ. IP budget. and yearly planning of budgets, forecasting out several years. This person will analyze all invention disclosure forms and meet with inventors to tease out what the novel invention is. Working with outside law firms, this person will inform the attorneys what the novel invention is and direct attorneys on how to proceed with prior art searches and patent prosecution, touching approximately 400 different applications or patents per year. This person will be responsible for implementing an IP strategy for ~60-90 technologies per year. This person will work directly with outside attorneys to direct their work and set pricing.

Must be able to work independently, possess a keen ability to be decisive, must possess high aptitude for meeting deadlines, be exceptionally detail oriented, have exceptional organizational skills, take into consideration the whole picture while analyzing the details, and be able to quickly and effectively break down large amounts of information to identify the crucial information related to patentability.

Essential duties include:

Review and approve the invention disclosure forms. Analyze data and determine what is the true innovation with market potential. Assist Inventors with curating data and description needed to constitute an “Inventor disclosure form”
Perform prior art searches and/or assess prior art search results for all technologies. Make patentability decisions and present those decisions to the commercialization team and the inventors. Stay up to date on USPTO procedures, SCOTUS decisions, and other decisions impacting patentability.
Coordinate with law firms to develop responses to office action rejections. Assess all ISRs and written opinions. Make decisions on all filings such as nationalizations, continuations, CIPs, and divisionals. Review all application drafts and claims to ensure they match the innovation, market potential, and direction of startup companies.
File provisional patent applications. Track and upload all data, information, and applications related to the IP portfolio into IP database. Assist with assignments and declarations. Assist with inter-institutional agreements. Ensure that all annuities and maintenance fees are paid on time by inputting all necessary data into CPI, approving or denying all payments on time.
Work with commercialization team to assess market potential of product. Maintain that all decisions made are not in violation of sponsored research agreements, interinstitutional agreements, or license agreements. Work with 3rd parties to report co-owned IP and determine which party will lead commercialization efforts, and report all IP updates to co-owners and licensees. Work with Operations to approve all legal invoices. Make all budget decisions.

All qualified applicants will receive consideration for employment without regard to race, religion, sex, sexual orientation, gender identity, national origin, citizenship, disability or protected veteran status.

Minimum Qualifications:

Either engineering degree, computer science degree, chemistry degree, biology degree, or related degree.

Preferred Qualifications:

Advanced degree preferred. Patent Agent or 4+ years experience managing an IP Portfolio preferred.

ABOUT NOTRE DAME:
The University of Notre Dame, founded in 1842 by Rev. Edward F. Sorin, C.S.C., of the Congregation of Holy Cross, is an independent, national Catholic university located in Notre Dame, Ind. For the fifth consecutive year, the University of Notre Dame has received Honor Roll distinctions as one of the top 10 higher education workplaces in the country in the Chronicle of Higher Education's annual "Great Colleges to Work For" survey...and we are proud of it!

This appointment is contingent upon the successful completion of a background check. Applicants will be asked to identify all felony convictions and/or pending felony charges. Felony convictions do not automatically bar an individual from employment. Each case will be examined separately to determine the appropriateness of employment in the particular position. Failure to be forthcoming or dishonesty with respect to felony disclosures can result in the disqualification of a candidate. The full procedure can be viewed at https://facultyhandbook.nd.edu/?id=link-73597.

Equal Opportunity Employment Statement:

The University of Notre Dame seeks to attract, develop, and retain the highest quality faculty, staff and administration. The University is an Equal Opportunity Employer, and is committed to building a culturally diverse workplace. We strongly encourage applications from female and minority candidates and those candidates attracted to a university with a Catholic identity. Moreover, Notre Dame prohibits discrimination against veterans or disabled qualified individuals, and requires affirmative action by covered contractors to employ and advance veterans and qualified individuals with disabilities in compliance with 41 CFR 60-741.5(a) and 41 CFR 60-300.5(a).

Please apply online at http://ND.jobs to Job # https://apptrkr.com/4016708. For additional information about working at the University of Notre Dame and various benefits available to employees, please visit http://hr.nd.edu/why-nd. The University of Notre Dame supports the needs of dual career couples and has a Dual Career Assistance Program in place to assist relocating spouses and significant others with their job search.

Additional Info
Employer Type: Law Firm
Job Location: Notre Dame, IN

Patent Agent and Search Analyst (Remote) – Small Corporation – Remote (U.S. Only)

April 1, 2022- US - Telecommute, Emp - Corporate (in-house), Tech - Biotech, Tech - Chemical / Pharma, Tech - Computer Science, Tech - Electrical, Work - Admin, Work - Other Patent, Work - Patent Agent

Aurora Consulting, a small corporation, is seeking a Patent Agent and Search Analyst to work remotely.

What you’ll do: You will help us navigate a very dynamic growth stage by assisting, as needed, in a wide array of disciplines including:

Patent portfolio management. Working closely with each client’s business, legal, technical, and management teams, you will assist with the client’s patent strategy and portfolio development efforts, including identifying and capturing inventive technologies, preparing applications, guiding patent prosecution, and IDS management.
Patent Search and Analysis. You will perform patent searches (patentability, FTO, state of the art, etc.), analysis, and competitive landscape monitoring.
Administrative backend. We’re working toward more automated solutions, but we still have several monthly tasks around reporting and project management that require human touch. Helping with additional administrative tasks like preparing client contracts and preparing various response shells would also be immensely beneficial to the team.
Growth initiatives. You will help us continue our growth trajectory via active participation in networking, business development, speaking engagements (virtual or in-person as comfort allows), podcast participation, and content development. This is compensated time and eligible for profit sharing.

Who you are: You have an undying love for people and supporting inventors and team members with the highest level of quality, high-touch service. Ideally, you’ll also be a good mix of the following:

Scientist or Engineer. Registered USPTO Patent agent with a background in bioengineering, engineering, biotechnology, chemistry, or related technical discipline.
Quality-focused, highly-efficient practitioner. 2 years as a patent agent who is technically skilled and comfortable drafting and reviewing utility and design patent applications that exceed client expectations. It would be a bonus if you are able to share an office action response that resulted in an issued patent and provide any published application or patent numbers for which you participated in drafting.
Search Sleuth. 2+ years experience performing various types of patent and non-patent literature searching. Desire to be an integral part of shaping and growing our search business.
Insatiable Tech Geek. Ability to review and analyze technically complex documents, including scientific papers, patents, and technical specifications.
Hyper-organized, crisp communicator. Excellent organizational, verbal communication, and writing skills.
Intuitive Collaborator. Team player with proven ability to work with dynamic and diverse groups of engineers, inventors, and business and strategy teams.
Hungry for autonomy. Can self-direct, manage, and motivate. Takes personal ownership and responsibility for driving high-quality results and consistently hitting deadlines.
OCD about detail. Strong attention to detail and accuracy.

Apply online at:
https://www.aurorapatents.com/careers.html

Include a cover letter and resume with your submission. It would be a bonus if you are able to share an office action response that resulted in an issued patent and provide any published application or patent numbers for which you participated in drafting.

Additional Info
Employer Type: Small Corporation
Job Location: Remote (U.S. Only)

Operations Manager – Other – Remote

March 8, 2022- US - Telecommute, Work - Admin

IP Edge LLC is seeking an operations manager to work remotely. The Operations Manager will coordinate and work with internal management and resources to set deadlines, define responsibilities, and consistently monitor progress of projects. The Operations Manager shall update management and team on status of projects. The Operations Manager will work with and manage multiple teams that include law firms, outside vendors and other parties to ensure deliverables are completed on time. The Operations Manager must have ability to think ahead, anticipate potential risks to project timelines, and take action to mitigate risks. The Operations Manager will need to learn and understand the nuances of patent due diligence and licensing to understand how decision-making impacts bottom line revenue for the company.

The Operations Manager will be successful in their role if he or she demonstrates the ability to run company projects from start to finish, meeting metrics and deadlines and earning management’s trust. Many times, meeting a metric not only involves meeting a measurable threshold, but meeting the threshold in a manner that optimizes business performance. The Operations Manager will need to thoroughly understand company objectives, and issue spot and raise questions to determine which business operations that are optimal, and which operations need to be modified to optimize business performance.

Responsibilities:

Define project objectives and scope
Monitor project schedules
Measure and track project progress according to defined metrics, and account for adjustments
Manage relationships with clients, law firms, vendors, and other outside parties and stakeholders
Mitigate project risks –proactively identify issues and problem solve without oversight
Coordinate with team members and third parties/vendors for execution of project deliverables
Identify, analyze, and implement the correct course of actions in the face of different possibilities, to ensure optimal team performance
Delegate tasks based on team member’s skills and experience and responsibilities
Provide progress reports to management. Must be able to spot and escalate issues as needed
Research counsel and makes calls to retain new counsel, for both lead and local counsel
Monitor incoming actions for the litigation team, coordinate with responsible team members to deliver prompt responses
Proactively identify where you need help and support and communicate your needs, to help ensure optimal team performance
Understand current business processes, and identify opportunities to enhance efficiencies through process improvement
Lead new initiatives across the company to establish new processes and infrastructure necessary for scaling and supporting growth
Manage quarterly and annual reporting, including financial reporting
Manage accounting of patent enforcement budgets and revenues

Requirements:

Remote position, online access
Prior project management work experience
Prior patent experience strongly preferred
Excellent written and verbal communication skills
Be able to anticipate questions and issues
When instructions aren’t clearly conveyed, be able to ask clarifying questions
Organized, attention to detail and can multi-task
Proficient with Microsoft office: Excel, Word, Powerpoint, etc.
Be comfortable working with P&L and financial reporting
Must be willing to improve constantly and strive to exceed ever rising performance threshold
Must be able to adapt to what may seem to be continual changes in direction and strategy without compromising performance
Resourceful problem solver
Can work independently with limited oversight

Please submit your resume to ops@ip-edge.com

Please include cover letter, resume and start date. No work visa applicants.

Additional Info
Employer Type: Other
Job Location: Remote

Patent Prosecution Legal Assistant (2-4 years of experience) – Law Firm – Chicago, IL

March 2, 2022- US - Midwest, Emp - Law Firm, Work - Admin, Work - Patent Prosecution

Hanley, Flight & Zimmerman, LLC (HFZ), a boutique patent law firm with its main office in Chicago, is looking to expand its team with talented and experienced legal assistant and paralegal professionals with 2-4 years of experience and a demonstrated ability to work independently within a team-oriented environment. HFZ’s patent legal assistants and paralegals are responsible for supporting the preparation, filing, and prosecution of U.S. and foreign patents. The successful candidate must be able to work on his/her own initiative under limited supervision and must be comfortable handling administrative aspects of U.S. patent prosecution; monitoring and assisting practitioners in meeting docketed filing deadlines; managing electronic files, and handling client correspondence. A legal assistant typically works with one to three patent practitioners. HFZ has a liberal remote work policy permitting the successful candidate to choose to work in the office, remotely or a combination of remote and physical work attendance.

IP Docket Specialist – Law Firm – Chicago, IL

March 2, 2022- US - Midwest, Emp - Law Firm, Work - Admin, Work - Patent Prosecution

Hanley, Flight & Zimmerman, LLC (HFZ), a boutique IP law firm located in the heart of downtown Chicago, is in search of an IP Docketing Specialist to join our Patent & Trademark staff. The IP Docketing Specialist is responsible for handling the Intellectual Property Patent &Trademark Docketing for our firm, working directly with IP attorneys, foreign filing specialist(s) and legal assistants to clear dockets, generate reports, and ensure all deadlines and reminders are fulfilled. This position will support all aspects of U.S. and foreign docketing, accurately identifying docketing deadlines for the benefit of our clients and the firm.

Job Duties:

Docket new patent & trademark case filings, incoming office actions, and correspondence (PTO, PCT, and Foreign Associate), as needed.
Assist with new client Patent & Trademark transfers as needed.
Run dockets reports for patent & trademark cases on a daily basis, and other specified intervals as required.
Assist in quality assurance review for patent & trademark, filings by noting and referring any errors or omissions observed during the normal course of docketing duties.
Prepare docket status and maintenance fee reports for clients and attorneys as needed.
Maintain and update foreign and U.S. patent & trademark prosecutions in the docket systems to track deadlines associated with obtaining and maintaining foreign and domestic patents & trademarks.
Assist in checking and updating the status of patent & trademark cases with the United States Patent and Trademark Office and foreign patent office’s when appropriate.
Perform electronic interactions with the U.S. Patent and Trademark Office as well as foreign and international intellectual property entities (e.g. searches, status checks, electronic filing of patent & trademark applications and responses).
Notify attorneys that items have been properly docketed.
Ensure all docketing items are timely and accurately processed in accordance with firm policies.
Performs other special projects within the department as assigned.

HFZ’s IP Docketing Specialist will be an individual who is:

Strongly analytical, organized, highly-motivated, proactive and detail oriented.
Problem solver and a team player with the ability to exercise independence and professional judgment in a fast-paced environment.
Shows excellent written, verbal, and people skills with the ability to "own problems" and resolve issues.
Have the ability to handle confidential information with diplomacy.
Maintains a high level of workflow and quality controls, as well as strict confidentiality of client and firm matters.
Position also requires the ability to work under pressure to meet strict deadlines.

Qualifications & Prior Experience:

Bachelor's Degree with Cumulative GPA of 3.0 or above.
1-3 years of substantive IP docketing experience at a major law firm or corporation required.
Extensive knowledge of U.S. and foreign patents, PAIR, Trademarks and PCT.
IP Manager experience a plus.
Possess a working technical knowledge to support the firm's docketing system databases.
Be tech savvy, with a willingness to learn new software.

To apply please submit your resume, transcripts and cover letter to the IP Docketing Specialist Job Opportunity posted on HFZ’s website: https://hfzlaw.com/recruit • ATTN: Bill O’Connor Recruitment Manager Hanley, Flight & Zimmerman, LLC is committed to diversity as a core value of the firm. We continue to build an inclusive culture that encourages, supports, and celebrates the diverse voices of our employees. A diverse and inclusive workforce enriches our work experience and enhances the value of our legal services. HFZ is an Equal Opportunity/ M/F/Vet/Disabled Employer.

Additional Info
Employer Type: Law Firm
Job Location: Chicago, IL

Patent Administrator – Other – Woburn, Massachusetts

January 16, 2022- US - Northeast, Work - Admin

Aptima is seeking a Patent Administrator to work in Woburn, Massachusetts

This role supports Aptima’s Patent Attorney who leads Aptima’s patent and trademark filing and other intellectual property efforts. You will assist with the organization, completion and tracking of documents and activities supporting invention disclosures, provisional patent applications, non-provisional patent applications and trademark applications. You can also expect to contribute to reporting, training, and support of these activities. You will also assist with and monitor weekly activities and deadlines and communicate this information daily with internal team members to ensure deadlines are met.

Other responsibilities include preparing application forms and working copies of application papers for filing patent & trademark applications with the USPTO, ensure electronic and paper copies of application files are kept current, update application status spreadsheets and agendas for status meetings, serve as back-up to other team members in cases of deadlines or absence, lead administrative projects related to intellectual property efforts and organize and set up conference calls and meetings as necessary.

You’ll Need:

Creative problem solving
Ability of working both autonomously and as part of a team
Curiosity and eagerness to learn new skills
Flexibility to change direction quickly
Strong organizational skills, self-motivation, and ability to self-manage multiple administrative projects simultaneously
Attention to detail and ability to follow through a sequence of events to meet deadlines
Experience drafting internal and external correspondence
Comfortable speaking with all levels of staff, including managers, scientists, and executives
Experience using Office 365, particularly MS Word and MS Excel
Experience and fluency in U.S. patent application procedures

Minimum Requirements:

U.S. Citizenship required or the ability to obtain a U.S. Security Clearance
Bachelor’s Degree in Administration or a related field
3 years supporting administration in a corporate office setting

Apply online at:
https://theapplicantmanager.com/jobs?pos=mo269

Additional Info
Employer Type: Other
Job Location: Woburn, Massachusetts

Senior Patent Agent – Corporation – Remote

November 8, 2021Work - Admin, Work - Other Patent, Work - Patent Agent, Work - Patent Prosecution

WestRock, a large corporation, is looking for an experienced patent agent for our in-house intellectual property team, which currently is made up of two attorneys, a patent agent, and two paralegals.

Responsibilities will include:

Drafting and prosecuting U.S. patent applications and working closely with outside counsel to prosecute international patent applications.
Collaborating with designers, engineers, and other technical personnel to understand new inventions and to implement drafting and prosecution strategies to ensure appropriate patent protection.
Conducting searches and providing analyses to support freedom-to-operate, infringement, invalidity, and other opinions.
Providing key business leaders with intelligence on competitor’s patent activities.
Assisting product teams to navigate complex patent landscape, including identifying creative “design-around” solutions to competitor’s patents.
Assisting in-house counsel with patent portfolio management.

What you need to succeed:

Admitted to practice before the U.S. Patent and Trademark Office.
Knowledge of USPTO and WIPO rules and procedures.
Undergraduate degree in engineering or similar technical field, preferably chemical engineering or materials science.
3+ years of experience as a patent agent in a law firm or corporate law department.
Experience with patent search platforms, such as Thomson Innovation and PatSnap or similar.
Strong interpersonal skills to work as part of a diverse team, and willingness to assist others.
Ability to work independently with minimal supervision.
Excellent written and oral communication skills.
Excellent organizational and prioritization skills to manage and meet deadlines.
Ability to work in a fast-paced and challenging environment.
Ability to meet new challenges with an open mind and an optimistic response.
Strong analytical and problem-solving skills and attention to detail.

What we offer:

Corporate culture based on integrity, respect, accountability and excellence
An attractive salary reflecting skills, competencies and potential comprehensive benefits, including healthcare and 401k
A career with a global packaging company where Sustainability, Safety and Inclusion are business drivers and foundational elements of the daily work

Apply via email to:
tonii.walker@westrock.com

Additional Info
Employer Type: Large Corporation
Job Location: Remote

Intellectual Property Administrator – Law Firm – Madison, WI; Milwaukee, WI; Waukesha, WI; Chicago, IL

September 2, 2021- US - Midwest, Work - Admin, Work - Paralegal / Legal Secretary

Michael Best & Friedrich LLP is seeking an Intellectual Property (IP) Administrator for our Madison, Milwaukee, Waukesha (WI) or Chicago (IL) offices. This role will be responsible for managing the day to day prosecution of domestic and foreign trademark and copyright applications. This includes all aspects of trademark searching, clearance, prosecution, maintenance, and enforcement.

IP Docket Specialist – Law Firm – Chicago, IL

August 19, 2021- US - Midwest, Emp - Law Firm, Work - Admin, Work - Patent Prosecution

Hanley, Flight & Zimmerman, LLC (HFZ), a boutique IP law firm located in the heart of downtown Chicago, is in search of an IP Docketing Specialist to join our Patent & Trademark staff. The IP Docketing Specialist is responsible for handling the Intellectual Property Patent &Trademark Docketing for our firm, working directly with the IP Docketing Manager, IP attorneys, foreign filing specialist(s) and legal assistants to clear dockets, generate reports, and ensure all deadlines and reminders are fulfilled. This position will support all aspects of U.S. and foreign docketing, accurately identifying docketing deadlines for the benefit of our clients and the firm.

Compensation is commensurate with Experience.

Job Duties:

Timely and accurately docket new US and foreign patent & trademark case filings, incoming office actions, transfer cases and correspondence (PTO, PCT, and Foreign Associate), as needed.
Support and work with the firm's docketing system databases.
Run docket reports as needed.
Provide a quality assurance review for patent & trademark filing docket entries by noting and referring any inconsistencies observed during the normal course of docketing duties for resolution.
Prepare docket status and maintenance fee reports for clients and attorneys as needed.
Assist in checking and updating the status of patent & trademark cases with the United States Patent and Trademark Office and foreign patent offices when appropriate.
Perform electronic interactions with the U.S. Patent and Trademark Office as well as foreign and international intellectual property entities (e.g., searches and status checks).
Upload Client documents to Anaqua, Aurora and other client interfaces as needed.

HFZ’s IP Docketing Specialist will be an individual who:

is strongly analytical, organized, highly motivated, proactive and detail oriented.
is willing to learn new skills to enhance the firm’s docketing.
can exercise independent thought and professional judgment in a fast-paced environment.
possesses excellent written, verbal, and people skills with the ability to work through problems to resolution.
Understands the importance of protecting confidential information.
Can work under pressure to meet strict deadlines.

Qualifications:

Bachelor's Degree with Cumulative GPA of 3.0 or above.
3 years of substantive docketing experience at a large law firm or corporation required; IP docketing preferred.
Extensive knowledge of U.S. and foreign patents, PAIR, Trademarks and PCT.
Experience with IP Manager and Anaqua a plus.
Possesses a working technical knowledge to support the firm's docketing system databases.
Be tech savvy, with a willingness to learn new software.

To apply please submit your resume, transcripts and cover letter to the IP Docketing Specialist Job Opportunity posted on HFZ’s website: https://hfzlaw.com/recruit

· ATTN: Bill O’Connor Recruitment Manager

Hanley, Flight & Zimmerman, LLC is committed to diversity as a core value of the firm. We continue to build an inclusive culture that encourages, supports, and celebrates the diverse voices of our employees. A diverse and inclusive workforce enriches our work experience and enhances the value of our legal services. HFZ is an Equal Opportunity/ M/F/Vet/Disabled Employer.

Additional Info
Employer Type: Law Firm
Job Location: Chicago, IL

Intellectual Property Administrator Supervisor – Law Firm – Denver, CO; Chicago, IL; Waukesha, WI; Madison, WI; Milwaukee, WI

August 17, 2021- US - Midwest, - US - Southwest, Work - Admin, Work - Intellectual Property

Michael Best is seeking an Intellectual Property (IP) Administrator Supervisor to join any of our Chicago, Waukesha, Denver, Madison or Milwaukee offices. The IP Administrator Supervisor will oversee the day-to-day operations of the IP Administrator support functions while maintaining a partial billable workload. Under the direction and leadership of the Practice Group Manager (PGM), the role will include effective coordination of workflow to the IP Administrator group.

Responsibilities & Duties:

Provide Trademark (TM) IP Administrators periodic feedback on their performance, including suggestions for professional development or performance improvement.
Coordinate workflow, manage distribution of work, establish priorities and assign projects as needed for IP Administrators.
Establish and implement standard operating procedures for TM IP Administrators by developing manuals, guidelines, training programs, and best practices.
Coordinate performance and evaluation processes for TM IP Administrators with HR and PGM.
Consult with attorneys to ensure the effective use of TM IP Administrators.
Conduct regular meetings with IP Administrators to address issues, concerns, and needs.
Monitor attendance, overtime, daily schedules, work-from-home days, and paid time off to ensure staffing needs are being met.
Participate in the recruiting process for IP Administrators and coordinate orientation and training of new employees.
Meet with new IP timekeepers to provide an overview of the IP Administrator support functions.
Ensure firm policies are practiced and followed and encourage open dialog, maintaining an “open door” policy.
Stay aware of updates to laws, regulations, and fees related to IP prosecution in the U.S. and globally.
Be present in all offices on a regular basis.
Maintain billable workload, filings, and docket responsibilities to the extent clients are maintained.
Coordinate with Docketing Manager on client intake and transfers out.

Knowledge, Skills, Abilities & Other Characteristics:

Organizational skills, ability to prioritize, attention to detail
Ability to manage critical deadlines
Knowledge of domestic and international trademark laws
Excellent communication skills
Ability to work effectively in a team environment
Team player
Works well in a fast-paced environment
Excellent oral communication and writing skills
Detail-oriented, with strong organizational skills
Demonstrate the highest level of internal and external client service and response
Strong project management skills and ability to manage critical deadlines.
Proficient in Microsoft Office Suite programs (Word, Excel, PowerPoint, Outlook)
Knowledge of Elite and iManage / similar document management system a plus

Job Requirements:

Bachelor's degree (strongly preferred) or Paralegal Certificate
Minimum of 8+ years’ experience as a trademark paralegal in a law firm or corporate law department
Experience with domain name and copyright law
Applied international trademark experience/knowledge
Experience with IP portfolio management databases
Understanding of the TMEP
Highly proficient in Word, Outlook, PowerPoint and Excel
Preferred Knowledge of Anaqua, Elite and/or iManage (or similar document management system) a plus.
Preferred 3 or more years of supervising and leading both local and virtual teams.

Apply online at:
https://lawcruit.micronapps.com/sup/JobPostingDetails.aspx?lawfirm=MiUyNTVFSms=&JobId=MW1vMTAlMjU2MA==&at=JTNhJTQwJTNiQQ==

Additional Info
Employer Type: Law Firm
Job Location: Denver, CO; Chicago, IL; Waukesha, WI; Madison, WI; Milwaukee, WI

Foreign Patent Prosecution Assistant – Law Firm – Oakland CA, Menlo Park CA, and Remote

June 18, 2021- US - Telecommute, - US - West, Work - Admin, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Weaver Austin Villeneuve & Sampson LLP, a specialty patent prosecution firm, is seeking to add to our talented staff. WAVS IP offers a pleasant, collegial work environment with competitive salaries (full-time positions offer a full complement of benefits). Remote work arrangements are possible.

Intellectual Property Director – Law Firm – Alexandria, VA

April 12, 2021- US - MidAtlantic and South, Emp - Law Firm, Work - Admin, Work - Intellectual Property

Buchanan Ingersoll & Rooney PC is currently searching for a Section Director - IP to join our Alexandria, VA office. This position will work closely with Section leaders to grow and manage the business aspects of the Section. Responsibilities include managing the day-to-day operations of the Section and practice groups, playing a prominent role in the execution of the Section strategic plan and lateral hiring; providing financial management and business planning; providing workload management of associates and paralegals.

Essential Duties and Responsibilities:

Develop and implement strategic business and recruiting plans.
Analyze Section performance (both financial and operational) on various reports and recommend avenues for increasing Section efficiency and profitability.
Prepare various action item reports for Section management, in areas including but not limited to WIP, A/R, and monthly performance by office, monthly realization and monthly workload; implement action items as directed by Section leadership.
Analyze Section performance (both financial and operational), develop and implement strategies to increase profitability, expand practice capabilities and continually improve Section operations.
Oversee Docketing, New Applications and the Foreign Filing Department, i.e., sets the expectations for administrators and supervisors, holds staff accountable for quantity and quality of work product, drives efficiency and innovative approaches, and intervenes on issues between Department members, attorneys and Practice Assistants.
Manage work flow for associates and paralegals of the Section. Direct supervision of paralegals.
Administer evaluation and compensation processes for associates and paralegals, in conjunction with the Human Resources & Talent Management Department and related Firm-level committees.
Serve as a liaison with other Practice Groups/Sections to generate cross-section utilization and expand business development opportunities. Serve as a primary liaison to the Administrative Departments on behalf of the Section.
Assist in the recruitment and integration of legal and non-legal staff.
Support the Section and Practice Group Leadership in implementing the attorney and paralegal professional development plans. As needed, serve as a liaison with the Human Resources & Talent Management Department in coordinating in-house continuing legal education programs, marketing programs and other professional development activities.
Facilitate communication between Section leadership and members.
Administer annual budget, Section business plans and progress reports.
Draft/analyze alternative fee arrangements consistent with Firm, Section and client objectives.
Assist in planning and coordinating of Section events such as Section retreat, lunch meetings, shareholder and associate meetings and client receptions.
Assist with conflict of interest issues for the Section.
Assist Business Development and Marketing Department with business development and marketing efforts.

Required Education/Experience:

Bachelor's degree with focus in Business or Finance.
Master’s degree or Juris Doctorate degree, a plus.
At least five (5) years of experience in a law firm.
Strong leadership, management and problem-solving skills.
Previous supervisory experience.
Intellectual Property industry knowledge, a plus.
Ability to read, write, and interpret business documents.
Strong financial analysis skills.
Excellent verbal, written and interpersonal communication skills.
Ability to solve practical problems with limited standardization.
Proficient in computer applications, specifically with FoundationIP and other practice-specific technology.
Knowledge of common legal practices.
Ability to handle multiple demands and priorities.

Buchanan Ingersoll & Rooney offers an outstanding benefit package that includes:

Medical
Dental
Vision
401K Program
Pension Profit Sharing Program
Paid Time Off
Paid Holidays

We are an Equal Opportunity Employer.

Apply online at:
careers.bipc.com

Please include a resume with your submission.

Additional Info
Employer Type: Law Firm
Job Location: Alexandria, VA

Technology/Patent Specialist – Small Corporation – Cleveland, OH

March 21, 2021- US - Midwest, Emp - Corporate (in-house), Tech - Biotech, Work - Admin

Trailhead Biosystems is seeking a life sciences technology specialist with 3-5 years of experience, who enjoys leveraging IP strategies to support Trailhead Biosystems’ mission to create industrial grade special human cells and therapies. The successful candidate, reporting to Senior IP Counsel, will directly support multiple scientific and therapeutic programs of Trailhead Biosystems, contribute to global patent preparation and prosecution strategy and help build the company’s intellectual property portfolio. In addition, the successful candidate is expected to routinely provide diligence and research support to the scientific and business teams of the company. The successful candidate should have meaningful patent drafting and prosecution experience in cell therapy, immunology, and/or life science technologies in general and significant research or technical experience in one or more of these fields. Candidate does not need to be registered to practice before the USPTO as a patent agent.

Responsibilities:

Work closely with scientists to capture innovations, and review and analyze invention disclosures and proposed publications.
Contribute to the drafting, filing, prosecution, and maintenance of patent applications that are high quality and strategically aligned with business goals.
Develop a deep understanding of patent portfolios in support of worldwide patent prosecution and contribute to company's global prosecution strategy.
Provide hands-on direction and input to outside counsel, including reviewing and revising a wide variety of work product, such as patent applications and office action responses.
Perform IP due diligence, technology assessments, and landscape and FTO analyses.
Support scientific and business development teams and activities, including with product, technology and scientific research.
Monitor and analyze competitive intellectual property.
Implement and administer IP policies and best practices
Manage IP reporting obligations with government funding organizations and in connection with company collaborations.
Support intellectual property-related transactional work
Maintain a strong knowledge practice before the U.S. Patent & Trademark Office
Requirements:
Ph.D. in a molecular biology, cell biology, immunology, or related discipline is strongly preferred; B.S./M.S. with significant work experience in stem cells, cell therapy, tissue engineering, and/or gene engineering may also be considered.
Minimum 2+ years of experience in the patent department at a pharmaceutical or life sciences company or at a law firm representing clients in the field of life sciences, biotechnology, or closely related patent areas working on patent application preparation, patent prosecution, client counseling, opinions, patent litigation and IP transactional matters.
Experience in U.S. and foreign intellectual property law relating to the biotechnology or pharmaceutical industries
3-5 years of experience conducting high-quality patent search and diligence projects, including conducting scientific journal and patent searching on Internet databases.
Strong technological aptitude for learning and working with a range of technologies; and a willingness to learn and engage with Trailhead employees and outside counsel in other technology areas, including small molecule drugs, formulations, and cell manufacturing.
• Excellent writing, communication, organizational, problem-solving, and analytical skills.
Proven track record of communicating complicated IP issues to scientists and management.
Capable of recognizing, assessing, and responding to urgent matters with timely, practical, and clear solutions.
Strong interpersonal skills and ability to strategically educate and support fellow employees.
Self-directed and proactive, comfortable executing on multiple projects independently and in collaboration with others.
Admission to the USPTO as a registered patent agent is not required. Company will support candidate’s interest in becoming admitted to practice before the USPTO as a registered patent agent, and to obtain a law degree at an ABA accredited law school in its evening division.

Apply online at:
https://www.linkedin.com/jobs/view/2463916864

Please provide resume and cover letter along with your application

Additional Info
Employer Type: Small Corporation
Job Location: Cleveland, OH

Patent Agent – Medical School – New York, NY

March 10, 2021- US - Northeast, Work - Admin, Work - Regulatory

NYU Grossman School of Medicine | NYU Langone Health is seeking a Patent Agent. In this position, you will manage activities related to the disclosure and protection of new inventions in engineering, computer science, and physical sciences and the transfer of technology from the Medical Center and the University to the marketplace. This includes assessing the patentability of new invention disclosures from faculty, identifying relevant prior art, analyzing substantive correspondence such as Office Actions from the US Patent and Trademark Office, and creating and maintaining detailed intellectual property records.

Job Responsibilities:

Adhere to Medical Center policies and behavioral standards
Meet with researchers to learn of their research, make them aware of intellectual property considerations, and encourage invention disclosures
Evaluate invention disclosures from faculty for patentability and copyright protection. Conduct prior art searches and summarize results in table and/or paragraph formats. Work with the Director, Intellectual Property, Director, Information Technology/Physical Sciences Technology Transfer, outside counsel, and inventor(s) to evaluate patentability of inventions
Assist Director, Intellectual Property, Director, Information Technology/Physical Sciences Technology Transfer, and outside counsel in preparation and prosecution of patent applications, to ensure adequate claim scope to cover commercially important aspects of invention are protected
Prepare formal patent document such as assignments. Prepare reports and presentations as needed by Director, Intellectual Property
Prepare and file federal copyright registrations
Monitor and manage patent prosecution deadlines. Ensure that responses to communications and office actions from patent offices (US and foreign) are timely met without extensions
Analyze and summarize Office Action rejections including any cited prior art (includes proposing arguments and/or claim amendments) and communicate to inventors, Director, Intellectual Property, Director, and Information Technology/Physical Sciences Technology Transfer
Create and maintain claim charts within a particular patent case as well as within patent families. Create and maintain patent family trees
Create and maintain detailed notes for each patent case in electronic database including data entry
Monitor deadlines and generate reports for patent maintenance fees and annuities and work with OIL Business Managers to ensure fees are timely paid. Maintain NYU online account for patent maintenance and annuity fees
Research prosecution matters on PAIR (and also foreign patent databases) and internal intellectual property management database
Ensure compliance with government reporting requirements for use of federal funds supporting research that has given rise to inventions and/or creations including data entry to iEdison database
Remain abreast of changes to USPTO rules, current patent prosecution issues and trends
Other duties as assigned

Qualifications:

1-3 years experience either at a company or law firm.
Masters degree in science or engineering required; Ph.D. is preferred; post doctoral research training or research experience is preferred.
Experience with patenting process and patent prosecution
Excellent administrative, negotiating, interpersonal and communication skills necessary
Ability to work effectively with academic scientists to achieve consensus and promote good long-term relationships
Ability to work to tight deadlines and manage own caseload
Outstanding attention to detail and strong prioritization skills
Excellent written and verbal communication skills
Advanced level of skill with Microsoft products such as Word, Excel, and PowerPoint and also online research tools
A technical writing sample is required.
Must be Registered U.S. Patent and Trademark Office Patent Agent (has taken and passed the patent bar examination and has good working understanding of patent process and procedures).
Strong technical background in engineering, computer science, or a physical science with excellent academic credentials.

Apply online to Job # 1078451_RR00047052 Jobs.nyulangone.org

Additional Info
Employer Type: Other
Job Location: New York, NY

SaaS Marketer with Patent Experience – Small Corporation – Remote

February 1, 2021- US - Telecommute, Emp - Corporate (in-house), Work - Admin

Patent Bots is looking to hire a marketer with patent experience. In particular, we are looking for someone (1) with diverse skill sets and who is willing to learn more, (2) who takes initiative and is able to work independently to find solutions, and (3) likes doing the work themselves instead of managing others.

Patent Prosecution Paralegal / Administrative Assistant – Small Law Firm – Daly City, CA

September 24, 2020- US - West, Emp - Law Firm, Work - Admin, Work - Patent Prosecution

Vierra Magen Marcus LLP is a small Intellectual Property law firm seeking a dependable and professional full time (35 hours/week) patent prosecution paralegal/assistant.

Intellectual Property Legal Administrator – Research Institute – Brookline, MA

July 13, 2020- US - Northeast, Emp - Non-Profit, Tech - Biotech, Work - Admin, Work - Licensing / Other Corporate

Dana-Farber Cancer Institute is seeking an Intellectual Property Legal Administrator for its Office of General Counsel.

Patent Prosecution Legal Assistant – Law Firm – Denver, CO

January 14, 2020- US - West, Emp - Law Firm, Tech - Any / Other, Work - Admin, Work - Paralegal / Legal Secretary

Sheridan Ross P.C. is seeking a Patent Prosecution Legal Assistant with 3 or more years of experience. A Patent Prosecution Legal Assistant, under the supervision and direction of Attorneys, helps to manage and organize materials and information relating to the drafting, filing and prosecution of patent applications. A Legal Assistant is an essential part of the team of people providing patent prosecution services to our clients and their duties will frequently include organizational, administrative and other clerical tasks that aid in providing clear and consistent communication to our clients.

Job duties include:

Prepare documents for patent applications and complete prosecution through issuance as assigned, including assist Attorneys with initial drafting of shell patent or trademark applications, draft and review correspondence including reporting letters, Responses to Office Actions, amendments, Notice of Allowance reviews, preparation and review of Information Disclosure Statements, providing instructions to foreign associates.
E-file relevant documents with US Patent & Trademark Office and state and federal courts as assigned.
Compile and organize case materials and fill in missing document gaps for current assigned cases; compile relevant documents in databases and network drives to maintain an accessible case file; actively maintain paper and/or electronic files with all relevant materials.
Employ various Firm resources, e.g. PATTSY, and shared network drives.
Facilitate communication between Attorneys and work directly with Attorneys in coordinating and executing their requests.
Serve as a point of contact for client, when necessary, to update on case status, etc.
Other administrative duties (e.g., maintain attorney calendar) as assigned.

Qualifications and requirements:

The ideal Legal Assistant candidate is a college graduate (or equivalent experience) with experience in the legal profession and a strong interest in IP law. Excellent oral and written communication skills are necessary, as is the ability to interact professionally with staff, attorneys, legal assistants, clients and vendors. The successful candidate must be able to work independently as well as with a team, have an acute attention to detail and be able to multi-task and prioritize while working in a deadline-driven environment. Strong technical skills are required, particularly Microsoft Word, Excel, Outlook, Adobe Acrobat, and a Document Management System; knowledge of Carpe Diem, Westlaw, Relativity, Campulaw, and Sharepoint is a plus. Occasional overtime availability is required.

Contact
Interested applicants should submit their resumes to edavis@sheridanross.com.

Additional Info
Employer Type: Law Firm
Job Location: Denver, Colorado

Patent Legal Assistant – Large Law Firm – Alexandria, Va.

August 20, 2019- US - MidAtlantic and South, Emp - Law Firm, Work - Admin, Work - Paralegal / Legal Secretary, Work - Patent Prosecution

Hauptman Ham, LLP, an intellectual property law firm located in Northern Virginia, seeks a Patent Legal Assistant who will support several growing IP practice groups. This Legal Assistant will handle patent prosecution with a focus on filing applications and information disclosure statements. The position requires a keen eye for detail, excellent organizational skills, the ability to prioritize workload, communicate well with other members of the team, anticipate needs and identify solutions to problems. This position will report to the Practice Manager and may be called upon to support other practice areas, as necessary.