IP Paralegal

ADI - Analog Devices

Limerick, Ireland

Manage and perform various patent and trademark administrative functions, alone and in conjunction with team members around the world. The job involves coordination and analysis of international patent matters, global trademark matters, invoices, mask works, and administrative duties as needed.

Responsibilities:

Manage intake and docketing of invention disclosure forms, coordinate flow of information between in-house attorneys, patent committees, and outside counsel to effectuate the filing of patent applications based on invention disclosure submissions
Develop and implement cost-saving measures through coordination and management of internal responsible IP portfolio managers and ADI inventors to conduct periodic portfolio reviews and culling
Develop, improve, and implement workflows, processes, and systems for coordinating all procedural aspects of U.S. and international patent and trademark prosecution with ADI IP team and outside counsel
Create, review and enhance operational workflows and best practices for internal IP team and outside counsel and vendors to improve service, increase efficiency, reduce labor costs and reduce exposure to risk within the IP practice group
Lead integration of IP portfolios to ADI resulting from M&A activities, and/or transfer of IP portfolios between law firms, including validating, coordinating and ensuring clean chain of title of IP assets, and coordinating transfer of IP case management to ADI preferred counsels
Monitor and maintain integrity of the IP Docketing System (Anaqua), which includes accuracy of the data and the implementation of system updates and upgrades, including quarterly law updates and providing recommendations and insight to IT and leadership on upgrades and enhancements
Perform searches for patent and trademark portfolio statistics including for the purposes of senior management presentations and patent awards
Formulating, organizing and monitoring inter- and cross-team projects, including assessing and deciding on suitable strategies and objectives
Analyzing and generating insights from IP database and invoicing and vendor data; providing insight, IP Metrics and Performance reporting to attorneys and other ADI team members
Relationship management of outside counsel and vendors, including coordinating in-house visits from outside counsel for legal and IP practice updates
Demonstrate effective interpersonal communication and professionally address requests, inquiries and requirements of our internal and external clients in a timely manner
Advise and provide creative process solutions and operations insights to IP team to generate enhanced inter-team workflow
Run database reports for Patent Awards and First Filing Awards
Work with HR and Finance to validate inventor employment data and ensure payment of patent awards
Act as point-person regarding approval of IP related invoices

Qualifications:

Experience/Education: A minimum of 5 years of IP management experience in IP legal department
Experience with docketing and IP support software (such as Anaqua) required
A thorough knowledge of Intellectual Property procedures and regulations, including foreign and domestic prosecution, enforcement, and post-grant/post-registration rules
Ability to develop IP reference materials, conduct related training and generate reports
Ability to mentor, inspire, and motivate IP team members to operate at their best level
A strong focus on client service and responsiveness
Aptitude for continuous improvement and automation
Must have excellent organizational and communications skills and be capable of promoting and implementing improvement-oriented ideas and developing new strategies
Solid computer/technology skills, including IP docketing databases, specialized IP practice platforms, document management systems, workflow technology platforms, MS Office, Word, and Excel
Self-motivated with the ability to be flexible and work collaboratively in a fast-paced environment
Exceptional discretion and judgment to ensure client confidentiality

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