Senior Paralegal Intellectual Property

US-IL-Northbrook
Job ID
2017-7149
# of Openings
1
Job Category
Legal

Overview

Contribute to a Safer, More Secure, and More Sustainable World. At UL, we know why we come to work. Thousands of us around the world wake up every day with one common purpose – to make the world a safer, more secure, and more sustainable place to live. We clear the way for our customers to introduce the latest products, technological advances, and systems in an increasingly complex world so they can provide peace of mind to the market. Our integrity is woven throughout our company and shapes the way we approach and deliver our solutions. We are proud that the work we do every day has a meaningful contribution to society. We continue to build upon our legacy of trusted expertise and partnership to keep our communities safe and secure as we march forward into the future. This helps us to sleep better at night, and we are confident that the millions of people we touch rest easier too.

 

The Intellectual Property group at UL is searching for a Senior Paralegal to provide legal support including maintaining trademark, copyright, and patent assets of the company, assistance with clearance and enforcement work, and support for the UL marketing teams.  The successful candidate will join an accomplished Intellectual Property team that includes the VP of Intellectual Property & Litigation as well as the Associate General Counsel of Intellectual Property, and will play a critical role in establishing and protecting the Intellectual Property of UL’s global organization.

 

NATURE/SCOPE OF POSITION:

  • Position typically works with the Vice President of Intellectual Property & Litigation, Intellectual Property Associate General Counsel and other managers and paralegals within the organization, other business personnel and outside counsel.   
  • Position typically handles confidential business information, including information relating to products, services, agreements and other intellectual property matters. 
  • Under the supervision of the Intellectual Property attorneys, decisions made in this position have a vital impact on the success of the business due to the impact that intellectual property assets have on the success of the business.

Responsibilities

  • Maintains trademark and other intellectual property (copyright and patent) database, records and corresponding files for global portfolio containing 1,000+ trademarks. Manages correspondence and contact with network of worldwide local counsel and foreign agents.
  • Prepares and files trademark applications, handles trademark registrations and renewals in all jurisdictions worldwide and has sole responsibility for maintaining and meeting deadlines. Handles responses to office actions and filing of pleadings and papers in TTAB proceedings.
  • Prepares and files copyright applications and maintains copyright registrations and files.
  • Performs and analyzes trademark clearance searches. Organizes and analyzes incoming trademark watch notices. 
  • Provides support for contentious IP matters (oppositions, cancellations, litigation) and is responsible for docketing and meeting deadlines. Takes initiative in investigating factual landscape for contentious IP matters and provides support in producing and responding to discovery requests.  Performs online searches and investigations.   
  • Responsible for the coordination of legalization and notarization of official documents (power of attorneys, assignments, licenses, etc.).
  • Drafts case, project and docket status reports, other correspondence, and reports related to projects, cases and caseloads and IP portfolios.
  • Manages and helps negotiate IP permissions, including permission agreements and other IP related authorization forms.
  • Conducts Intellectual Property due diligence.
  • Assists with outside IP legal spend budget management, including oversight of external counsel billing practices, initial review of law firm invoices and management of external counsel costs.
  • Supervises and conducts the legal review of company-wide marketing materials and press releases. Responsible for understanding brand guidelines.
  • Assists with internal trainings in connection with protection of Intellectual Property and compliant use of brand assets.
  • Drafts and reviews documents in areas of specialization.
  • Performs other duties as directed.

Qualifications

  • Bachelor’s Degree or paralegal certificate with 7+ years of IP paralegal experience at a law firm or in-house, preferably including both IP prosecution, marketing support and litigation
  • Trademark and copyright experience required
  • Patent experience is also desired but not necessary
  • Knowledge of and experience with CPI, TESS, SAEGIS, PACER and major online IP retrieval websites and databases, Outlook, MS Word, MS Excel and MS PowerPoint
  • Strong verbal and written communication skills in addition to providing high levels of analysis resulting in effective trademark compliance processes
  • Ability to organize and self-motivate to achieve results and track performance so that problems are detected early or prevented entirely
  • Must be pro-active in identifying, addressing, and communication issues and managing deadlines with Intellectual Property attorneys
  • Must be able to work independently and within a team environment

Grow and Achieve. Growth and development are part of our DNA. Our working environment is a launch pad for our employees to excel. Your growth will be supported with targeted development, rewards and recognition programs, so that you can maximize your potential.

 

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