Job Details

Senior Intellectual Property Paralegal

Company name

Aspect Software, Inc

Organization Type

In-House

Job Type

Legal Staff

Date Last Verified

Sep 13,2019

Valid Through

Dec 27,2019

Posted on

Jun 07,2019

Years of Experience

Min 5 yrs required

Location

Westford, MA, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - Patent >> Intellectual Property - Patent - Hard Sciences >> Software
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Senior Intellectual Property Paralegal
The candidate will be responsible for all aspects of support for company’s Intellectual Property function. Will report to the General Counsel and is primarily responsible for assisting in the management of company’s intellectual property portfolio. Provide general administrative/paralegal support for various general corporate, corporate governance, compliance, and transaction matters. Provide legal and administrative assistance to in-house attorneys, outside counsel, and management. Assist in prosecution of patents before the USPTO. Manage all aspects of internal patent database, including the creation of all new patent records based on invention disclosures received, creation of detailed reports for various internal business purposes, and maintenance of all inventor profiles. Review all incoming patent and trademark correspondence from US and foreign patent offices and outside counsel; track deadlines; and coordinate with in-house attorneys to provide instructions to outside counsel. Manage patent, trademark, and copyright portfolios through coordination with marketing, product development, and legal team leadership. Manage patent and trademark dockets and deadlines. Perform on-line searches of patent and trademark records, industry databases and general legal research. Preparation and maintenance of annual IP Budget. Coordinate filing of applications, statements of use, renewal applications, payment of fees, affidavits of use, and assignments. Coordinate with internal stakeholders concerning new portfolio developments such as PTO actions and grants. Assist in investigating and responding to infringement matters. Coordinate execution of all IP-related documents by company officers and inventors.

Qualification and Experience

The candidate should have a Bachelor’s degree and/or paralegal certification. Must have 5+ years of paralegal experience working with all in-house intellectual property matters. Knowledge of all patent procedures and actions required. Experience in software or software-as-a-service industry preferred. Should have knowledge of patent procedures including Bar dates, patent application requirements, information disclosure statements, and USPTO actions. Ability to research patent applications using Patent Application Information Retrieval (PAIR) is required. Some knowledge and understanding of the Patent Cooperation Treaty and foreign country patent and trademark rules is needed. Experience working with, and reviewing, open source licensing and in-bound/out-bound software licenses is essential. Working knowledge of how to conduct trademark registrability searches for proposed new trademarks is a must.

Company info

Hiring Coordinator
Aspect Software, Inc
14335 NE 24th Street, Suite 210
Oakhurst Center, Building B
Bellevue, WA 98007

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