ip paralegal.

Job Overview

Location
Addlestone, England
Job Type
Full Time Job
Job ID
104774
Date Posted
1 year ago
Recruiter
Kevin Carol
Job Views
307

Job Description

Job Description:

* This role manages the global patent and trademark portfolio with the objective to ensure best possible use and protection of the IP across the group (making IP available to relevant managers and colleagues, monitoring competitors' activities and potential IP infringements, assisting managers and attorneys in protecting IP against infringement, assisting in legal IP proceedings and assisting in development and filing of new I.P.).

* The role holder is the interface between Line Managers, inventors, patent and trademark attorneys, patent and trademark renewal agency, Patent and Trademark Offices, and is responsible for the coordination / completion of all IP related activities in relation to

* Prior art and patentability searches; availability searches relating to trademarks

* Patent and trademark applications and prosecution

* National phase of patent applications

* Patent and trademark renewals

* Office Actions and Examination Reports issued by patent and trademark authorities worldwide o Legal aspects of IP (protecting the company against IP infringement by third parties and infringement claims from third parties)

* Assisting in drafting assignment, licence and coexistence agreements

* Monitoring of deadlines (renewals, responses to Office Actions, Examination Reports et al.)

* Arranging evidence of use documentation (in connection with trademark renewals)

* Assisting in preparing annual budget and in ensuring budget compliance

* Managing and continuous updating of IP database, including relevant intercompany and third party agreements

* Managing Document Management System for global technology group

* Quarterly reviews of royalty calculation of company subsidiaries based on intercompany licence agreements

* Keeping track of chemical formulation transfers within the group (as backup for tax audits)

Key Accountability

Safety, Health, Environment & Security:

* Comply with company Health & Safety rules and regulations

Commercial / financial Ownership

* Carry out online prior art searches, where possible, to reduce fees payable to patent and trademark attorneys

* Manage IP cost tracker; review and approve invoices

* Assist in ensuring budget compliance for IP management

* Monthly IP reports

* Quarterly Royalty reviews / updating schedules of licensed products regularly for royalty calculation

* Assist in preparing calculation of royalty entitlement of German employees / inventors in line with German Employee Invention Act

Working Together

* Drive knowledge sharing - make information about the company's IP available to all relevant stakeholders

* Keep Line Managers and colleagues apprised of competitors' activities and patent publications

* Best practice / knowledge shared across the business

Critical Experience and Qualifications:

* Experience within a complex, international environment involving chemical and steel products preferred

* Sound knowledge of product portfolio and application types, interface between disciplines

* Sound knowledge of protected technology

* Sound knowledge of legal requirements and good understanding of IP legislation in core countries (The United States, Canada, most of Western Europe, Japan, Australia and New Zealand)

* Problem solving & project management skills

Randstad Business Support acts as an employment business when supplying temporary staff and as an employment agency when introducing candidates for permanent employment with a client. Randstad Business Support is an equal opportunities employer and decisions are made on merits alone.

Job ID: 104774

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