Job Details

Sr Patents and Licensing Spec Manager

Company name

Organization Type

In-House

Job Type

Attorney

Years of Experience

Min 10 yrs required

Location

Whippany, NJ

Posted on

Aug 03,2017
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent General
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Sr Patents and Licensing Spec Manager The candidate will create and implement business processes which currently do not exist that will include agreement terms for certain external firms including billing requirements: Audit invoices against the terms and conditions created and implemented; Ensure the timely review, processing and analysis of trends in invoices from law firms and manages and tracks budgets; Develop the contract plan for certain external firms by selecting the most beneficial commercial approach and qualify providers, and also oversee the entire bid process and negotiate and execute the contract changes and disputes; Manage customer relationships by looking for, finding and implementing opportunities for process improvements and savings opportunities, in past billings, present invoices and for the future. Assume responsibility for management of accounting, procurement and audit issues. Assist with other financial duties as needed to support the law department (i.e. manage the budget process). Train, supervise and ensure quality work from Paralegals and IP Data Specialists who: Draft patent prosecution forms, templates, and other patent documents for a patent attorney or patent agent (i.e. responses to USPTO and foreign agents); Gather information relative to legal (patent prosecution and litigation) issues; Prepare litigation summaries, track intellectual property litigation and support document management process, serve as key contact and support discovery related to intellectual property litigation, and identify persons that may need to be subject to hold orders; Research statutes, regulations and court decisions and analyze data; Investigate requests for information and respond or refer to a patent attorney or patent agent as appropriate and draft proposed responses; Assist with due diligence in mergers and acquisitions, is a key contact for diligence document requests. Develop patent prosecution policy and implementation: Possess excellent knowledge of intellectual property legal principles; Stay abreast of changes in laws, rules, regulations in the area of patent prosecution and other relevant regulatory areas, disseminates pertinent information to the team; Assist in assessing vendors for patent prosecution and litigation support services; Review training documents to guide Commercial Business and Research & Development employees with patents and company policies; Supervise the Patent Paralegals and IP Data Specialists; Interview, train, provide feedback, etc. for patent paralegal and patent administrative assistant staff as required; Have a sense of urgency and priority of workload for the Patent Paralegal staff including managing multiple priorities by completing assigned legal projects by utilizing detailed planning, sound business analysis, information systems support and expert legal training. Provide legal assistance to patent attorney or patent agent: Provide proposals for attorney review for handling legal matters on highly complex issues concerning the obligations of the corporation as it relates to patents and other intellectual property and executes on accepted proposals; Possess strong working knowledge of the business and operational goals and objectives of the business; Function as a key advisor in achieving the patent department goals; Engage in team meetings and lead sub-teams directed to patent prosecution and vendor management matters. BA/BS degree in Accounting, Information Systems, Mathematics, Business or similar field OR 10+ years of experience as a Patent Paralegal with 5+ years of increasing responsibility, or comparable work experience required. Strongly demonstrated knowledge of business economics including marketing, sales, planning and controls required. Must possess knowledge of business processes, service contracts (i.e. structure and legal aspects). Excellent interpersonal, leadership and negotiation skills required. Excellently demonstrated planning, organizing, and execution skills required. MBA; JD or Patent Agent with supervisory experience and/or audit skills preferred.

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