Job description
If you’re looking for a special place to build or grow your career, you’ve found it. Whether you’re an experienced professional, a recent college graduate or somewhere in between, IDEX is a place where you can apply your existing skills and learn new ones in an environment where you can make an impact.
With interesting opportunities in engineering, marketing, sales, supply chain, operations, HR, finance, and more across more than 40
diverse businesses
around the globe, chances are, we have something special for you.
The Intellectual Property Paralegal is primarily responsible for a range of matters such as: (i) evaluating and managing an extensive IP portfolio; (ii) maintaining the IP docket for our business and intake of new patent/development matters; (iii) liaising between outside counsel, business units and our internal IP team; and (iv) drafting and reviewing non-disclosure agreements (NDAs). The position will also include searching and filing of U.S. trademarks and management of our global trademark portfolio for which we are willing to train. The position reports to the Managing Paralegal IP & Corporate and is located at the IDEX Corporate Office, located in Northbrook, IL.
Essential Duties and Responsibilities
Patent Management and Docketing:
- Correspond and coordinate patent filings with counsel and legal support personnel
- Manage and maintain patent docketing database
- Manage and instruct outside vendor on patent annuities globally
- Provide legal assistance to business units on patent matters under the direction of patent counsel
- Perform patent due diligence searches worldwide and draft reports for corporate transactions and potential mergers and acquisitions
- Request, receive and audit incoming patent assets for new corporate acquisitions, including assimilation into docketing system
- File assignments for new acquisitions, including drafting, filing and acquiring legal documents
- Correspond with business units regarding patent maintenance fee budgets
- Correspond with business units regarding corporate patent policies and processes
- Manage patent maintenance fee instructions from business units
- Assist with organizing, hosting and presenting IP seminars and trainings
- Liaise with outside patent counsel, business units and in-house counsel
Trademark Management and Docketing:
- Screen, search and clear proposed trademarks
- Coordinate non-domestic trademark clearance searches with outside counsel
- File U.S. trademark applications
- Coordinate annual budget reports and renewal activity for trademark registrations worldwide
- Trademark docketing for U.S. and non-domestic trademark matters
- Liaise with business units as the first line of communication for trademark filings, prosecution, renewals and conflicts (oppositions, cancellations, infringements, UDRPs and counterfeits) and coordinate management of same with managing paralegal
NDA Review and Management:
- Draft and review NDAs
- Draft and review NDA amendments
Requirements:
- 2-5 years of patent experience at a law firm or as part of a corporate legal department
- Paralegal certificate required
- Experience with DiamsIQ docketing software or an equivalent IP docketing program
- Knowledge of worldwide patent processes and procedures, required
- Knowledge of NDAs
- Trademark searching and filing experience preferred
- Strong organizational and project management skills
- Ability to multi-task and prioritize work in a fast-paced environment
- Strong judgment, professionalism and communication skills
- Ability to work independently and complete projects in a timely manner
- Ownership and ability to “run point” on role responsibilities
- Good attention to detail and precise written work product
- Ability to exercise discretion and diplomacy in handling confidential matters
- Proficiency with Microsoft Office Suite
- Possess strong interpersonal and presentation skills and ability to communicate effectively with others at all levels of the organization
- Self-starter attitude, combined with the ability to exercise independent judgment and critical thinking
- Ability to establish and maintain strong relationships across the organization’s various departments and work on a team
- Strong desire to learn new technology and legal skills
Are you ready to join a different kind of company where our people, our culture, and our commitments are centered around providing trusted solutions that improve lives around the world?
IDEX is an Equal Opportunity Employer and Affirmative Action Employer. IDEX gives consideration for employment to qualified applicants without regard to race, color, religion, creed, genetic information, sex, sexual orientation, gender identity or expression, marital status, age, national origin, disability, protected veteran status, or any other consideration or protected category made unlawful by federal, state or local laws (Minorities/Females/Protected Veterans/Disabled).
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