Intellectual Property Paralegal

Regal RexnordMilwaukee, WI
1d$39 - $55Hybrid

About The Position

In this role, you will be responsible for managing Regal Rexnord’s global intellectual property docket and portfolio in coordination with our Chief Intellectual Property Counsel, outside counsel, and key internal stakeholders throughout the organization. You will manage various patent and trademark prosecution matters day-to-day and provide guidance related to patents, trademarks, and domain names. This role presents an exciting opportunity to engage with cross-functional stakeholders to drive innovation and support a diverse range of products. You will report directly to the Chief Intellectual Property Counsel. Preferred hybrid onsite presence at our Chicago (Rosemont) or Milwaukee office. Remote work may be considered for highly qualified candidates.

Requirements

  • Bachelor’s Degree or paralegal certificate
  • 7+ years experience managing patent and trademark docketing and filings (U.S. and International).
  • Strong customer service orientation and oral and written communication skills to effectively communicate deadlines and requirements for IP matters to internal stakeholders.
  • Proven ability to manage and process large volumes of complex information and provide clear practical guidance to business leaders.
  • Effective project management skills to drive processes and initiatives forward efficiently and in a timely manner.
  • Proficiency with intellectual property database management systems, specifically CPI.
  • Experience with electronic research tools and electronic filing systems for patent and trademark prosecution (i.e., USPTO, WIPO).
  • Experience conducting, evaluating, and reporting patent and trademark clearance searches and opinions.
  • Excellent attention to detail, strong organizational and prioritization skills with the ability to meet deadlines in a fast-paced environment.
  • Ability to work both independently and in a team environment.

Nice To Haves

  • Large law firm experience supporting intellectual property matters for industrial/manufacturing clients
  • In-house experience at a global industrial/manufacturing company
  • Experience with invoicing and budgeting, specifically Legal Tracker proficiency
  • Experience with domain management and UDRP proceedings
  • Contract experience, specifically non-disclosure agreements, assignments, and licensing
  • Experience reviewing marketing, advertising, and product claims
  • Copyright experience

Responsibilities

  • Manage the global intellectual property (IP) portfolio in coordination with Chief Intellectual Property Counsel, outside counsel, and key internal stakeholders.
  • Maintain and monitor patent and trademark dockets, including managing deadlines, coordinating with outside counsel, collaborating with internal stakeholders, and gathering documentation required for filings.
  • Maintain intellectual property database (CPI).
  • Manage patent annuity and trademark renewal processes, including facilitating internal review in advance of renewal deadlines.
  • Support the invention disclosure and review process, initial patent searches, clearance assessments, and related prosecution matters.
  • Manage trademark clearance searches and related prosecution matters for new trademark applications.
  • Communicate with internal stakeholders, outside counsel, and foreign associates on IP-related matters.
  • Prepare regular reports on the status of the patent and trademark portfolio as well as specific matters.
  • Assist in reviewing IP agreements, including, for example, non-disclosure agreements and licensing terms.
  • Collaborate with outside counsel and oversee budgets for IP-related activities.

Benefits

  • Medical, Dental, Vision and Prescription Drug Coverage
  • Spending accounts (HSA, Health Care FSA and Dependent Care FSA)
  • Paid Time Off and Holidays
  • 401k Retirement Plan with Matching Employer Contributions
  • Life and Accidental Death & Dismemberment (AD&D) Insurance
  • Paid Leaves
  • Tuition Assistance

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What This Job Offers

Job Type

Full-time

Career Level

Mid Level

Number of Employees

5,001-10,000 employees

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