IP Paralegal

Resideo is seeking a highly-organized and detail-oriented Intellectual Property (IP) Paralegal to support the legal team with respect to all aspects of its IP law practice, with a focus on patent and trademark, while also providing some general administrative support to the legal department. This role will report to the Chief IP Counsel.
 

JOB DUTIES: 

• Oversee Resideo's patent management database tool (IP Folio), document all essential docketing information, manage user accounts, generate reports for IP attorneys and business leaders
• Administer Resideo patent committees, maintain membership roster, monitor patent docket for actions requiring decision, schedule and drive regular meetings, create agendas, record minutes, implement patent committee decisions, process inventor awards
• Coordinate cross-functional maintenance reviews of patent and trademark portfolios, communicate results to outside counsel and annuity payment provider
• Communicate with employees regarding the invention submission process, ensure disclosure forms are complete, identify and escalate bar dates; similarly coordinate with business partners regarding requests for new trademark filings as well as renewals
• Coordinate with outside counsel on all stages of patent and trademark filings and prosecution worldwide
• Manage USPTO, WIPO, and EPO correspondence, inventor oaths/declarations, invention disclosures, and other ancillary documents
• Review terms of inbound and outbound licenses to track compliance
• Support in-house counsel in clearance, enforcement, litigation, acquisition, and licensing activities
• Generate department reports to include patent metrics and spend against budget
• Identify, document and implement improvements to current paralegal processes and workflows
• Coordinate with outside counsel on billing for services, create new matters in billing database (Ascent) 
• Other responsibilities as assigned

YOU MUST HAVE:

• Bachelor's Degree or Associate Degree with Paralegal Certification
• 3+ years of IP paralegal experience in a corporate in-house legal department
• Familiar with US, PCT, EPO/EUIPO, WIPO and other non-US IP application processes and timelines
• Existing authorization to work in the Czech Republic

WE VALUE:

• Experience with in-house legal team at a large company or large law firm
• Experience working within a technology consumer products company
• Experience in using electronic docketing and electronic matter management; prior use of software programs IP Folio and Ascent 
• Proficient computer software skills in Microsoft Office (Word, PowerPoint, Excel and Outlook)
• Proactive problem solving with an ability to prioritize, meet deadlines, seek guidance and escalate appropriately, effectively manage time and projects, and handle multiple assignments in a fast-paced environment
• Excellent interpersonal and teamwork skills with strong sense of accountability, adaptability, and a positive attitude
• Stellar organizational skills and resourcefulness
• Exceptional attention to detail
• Fluent in the English language, including experience with verbal/written communication of legal and technical matters
• Superior verbal and written communication skills
• Flexibility and willingness to pitch in on unexpected project

WHAT'S IN IT FOR YOU? 

• Hybrid Working (3 days in office, 2 days remote)
• A collaborative and inclusive work environment where your contributions are valued. 
• Opportunities for continuous professional growth and skill development through training, mentoring, and challenging projects. 
• Benefits Package: 5 weeks holiday,Flexible working hours, Meal tickets, Contributions to pension/ life insurance

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