Job Details

Intellectual Property Program Manager

Company name

Evoqua Water Technologies LLC

Organization Type

In-House

Job Type

Legal Staff

Valid Through

Nov 27,2019

Posted on

Aug 14,2019

Years of Experience

Min 7 yrs required

Location

Pittsburgh, PA, United States

Employment Type

Full-time

Industry

Legal
Practice Area
Intellectual Property >> Intellectual Property - General
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Intellectual Property Program Manager
The candidate will support the Senior Counsel and Head of Intellectual Property and Senior IP Counsel. Will act as first point of contact for questions on IP issues for various Central Functions organizations such as M&A, Procurement, IT, Project Management and Human Resources Training Managers. Coordinate necessary IP Department resources as needed. Prepare/review NDAs for these departments. Support IP Counsel and in-house Attorneys/Contract Managers with tracking, negotiation and approval of IP-related contracts, including review of IP licensing and collaboration agreements. Corporate Intellectual Property Incentive Programs. Coordinate the review of technical papers/articles by IP Counsel, review by Trademark paralegal for proper trademark usage, and negotiate and track copyright agreements that authors are asked to sign by publishers. Responsible for developing a workflow solution to manage the entire process which involves multiple parties and often stretches over months with multiple stages from abstract through to publication. After publication, request payment of awards to authors. Compile list of granted US patents based on search of records at USPTO at the end of each quarter and determine eligibility of inventor and patent for receipt of an award. Interact with award company to request plaques and contact payroll for payment of monetary award. Support IP counsel with list of inventions from IP database for consideration and assist with creation of presentation of candidates for Executive Team. Interact with award company to request plaques and payroll for payment of monetary award. Interact with Senior Management to coordinate presentation of award and with Communications group for internal announcements and recognition. Compile list of inventions and rating points for each inventor at the end of fiscal year. Determine top 3 inventors for special award. Request payments of monetary awards from payroll for all inventors and request plaques from outside vendors for top 3 inventors. Interact with Senior Management to coordinate presentation of award and with Communications group for internal announcements and recognition. Act as primary contact to M&A team and coordinate IP resources needed for due diligence associated with potential acquisitions. Work closely with M&A team to identify necessary IP feedback to Steering Committee and assist with scheduling of attendees for group calls. Manage IP integration of acquisitions by interacting with target company’s outside counsel to transfer patents and trademarks in-house, enter information in docketing database, and coordinate training of new employees on firm’s IP policies and procedures. Work with HR Training Managers and LMS system coordinator to monitor and schedule training classes for new hires. Review course portfolios and new IP training course content and make changes as needed to keep training courses current and relevant. Participate in long-range training planning committees and provide content and suggestions to insure that IP training is available to all employees who need it. Draft and update IP policies and procedures and make these available on the firm Intranet. Obtain approvals from designated business management. Keep IP Intranet site current and add content as required. Understand functions of CRM system and work to integrate NDAs into the process so they will be available to project teams and contract managers working on the project. Manage firm domain name portfolio. Interact with domain management firm and IT to coordinate transfer of domain names from acquisitions to firm. Review domains names due for renewals with responsible business contacts in the company and decide if renewals should be completed. Review incoming invoices for accuracy of charges. Establish watch services to monitor use of firm brands on the internet and provide support to Trademark Paralegal on infringement issues. Responsible for tracking of outside counsel spend and all other purchased IP expenses. Compare invoices to work docketed in IP database to ensure that charges are accurate and insure compliance with limits or fixed fees outlined in engagement letter. Need detailed knowledge of IP processes described in invoices to assess accuracy of charges. Break down invoices to the individual patent/trademark matter level in master spreadsheet. Determine type of action taken (Filing, prosecution, etc.) and enter in master spreadsheet along with cost breakdown to allow for review of charges by transaction type for tracking and budgeting purposes. Upload information from IP docketing system for current patent and trademark portfolios for loading into master spreadsheet. Populate data into fields of spreadsheet based on matching docket numbers to ensure that information on new cases or status changes in current cases are available for comparison to invoiced amounts. Interact with outside counsel on invoice questions/credits and request monthly forecasts. Interact with firm finance team to request vendor numbers and Purchase Orders for all IP law firms and software/service vendors. Monitor amount available on PO to make sure amount is sufficient to pay upcoming invoice and request replenishment of invoice if necessary. Review all pending patent cases to determine if costs can be capitalized based on date of first filing in family and current legal owner of item. Determine if abandoned cases now need full amortization. Provide items to be capitalized/fully amortized to finance quarterly. Submit requests for cross-charges of costs to business divisions as required. Update pivot tables in master spreadsheet for generation of reports showing detailed breakdown of costs by Segment/Division as well as detailed breakdown of spending for management reporting and comparison of budget to actuals. Provide information for annual IP Department Budgeting based on prior year spending. Negotiate pricing for annual subscriptions/services with vendors (where applicable) and obtain estimates of projected costs from outside counsel. Maintain current list of required attendees as organizational changes are made and organize 3 meetings per year. Assign responsibilities for preparation and review of materials to be presented at meeting and insure that materials are distributed far enough in advance for members to provide meaningful input and make decisions during the meeting. Review material prepared by paralegals against current docket reports and other information in IP database to ensure that all necessary topics are included. Monitor status of funds available in USPTO Deposit Account to ensure that funds will be available for activities when needed. Request replenishments from Treasury department. Control access by adding/deleting users. Provide monthly report of spend to Finance for reporting and reconciliation. Prepare quarterly metrics presentation for management detailing filings, grants, inventions submitted and current status of portfolio and IP spending by Segment/Division or Technology. Provide quarterly report of new patent and trademark applications filed to Credit Suisse as required to keep company in compliance with terms of financing agreement.

Qualification and Experience

The candidate should have a BS/BA degree. Should have a law degree, experience managing corporate IP programs. Should have exposure to all aspects of the operations of the business as well as interact with executive management and corporate in-house counsel on a variety of IP-related matters. Should have 7+ years of experience relative to the role including working knowledge and experience with patent, copyright, and trademark prosecution processes and laws in US, WIPO and EPO. Experience with IP-related transactional matters and contracts, such as technical collaborations, licensing, and knowledge of the role of IP in product sales cycle is essential. Should have 3+ years of experience using IP docketing systems, such as CPI or IP Manager. Experience using IP resources available at the USPTO (such as PAIR, EFS-Web, EPAS, TEAS, TSDR) and search databases/resources available at other international patent and trademark offices (such as PATENTSCOPE, ESPACENET, EUIPO, WIPO). Strong computer skills and experience with Microsoft Word, Excel, Outlook, PowerPoint and other Office 365 software essential. Strong communication and presentation skills is essential. Experience training others on IP topics is helpful. Experience with workflow software tools and databases to and ability to develop or advise others on development of solutions in an IP environment preferred. Experience acting as a docketing system administrator able to create templates for standard responses and e-mail docket reports to be sent out by the system on a scheduled distribution schedule desired.

Company info

Hiring Coordinator
Evoqua Water Technologies LLC
210 Sixth Avenue
Suite 3300
Pittsburgh, PA 15235

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