Senior IP Specialist

POSITION SUMMARY

The Senior IP Specialist will work directly with the Matthews’ legal team to develop efficient and sustainable process and management systems for complex innovation information and data.  This role is responsible for a variety of critical intellectual property support functions including managing IP assets, litigation and their related documents and deadlines, fostering outside counsel relationships, collaborating on high priority projects related to IP management and reporting, developing operational processes and procedures, and assembling training and education materials.

JOB RESPONSIBILITIES

•    Respond to various IP requests from business teams such as patent FTO's 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 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 & 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; and perform duties related to other special projects as required.
•    Oversees legal responsibilities regarding dissolutions, mergers, and acquisitions. 
•    Gathers and analyzes research data, such as statutes, decisions, and legal articles, codes related to IP.
•    Organizes and manages documents and information available in electronic IP management system for maintenance and informational purposes.
•    Drafts and files entity formation, dissolution documents, fictious name registration, and organizational documents, including articles of incorporation and first board resolution.
•    Oversees 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.
•    Additional duties as assigned. 

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 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 going 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 & Internet applications.
•    Strong analytical, prioritizing, interpersonal, problem-solving, presentation, budgeting, project management (from conception to completion), & planning skills.
•    Exceptional verbal and written communication skills (including analysis, interpretation, & 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.

P