Paralegal will help manage and oversee the company's IP portfolio and will assist with IP protection, litigation, and licensing matters, with an emphasis on trademarks. The IP Paralegal will serve as the liaison between in-house/outside counsel and various company functions and business units and will have primary responsibility for maintaining the IP portfolio. This role will require a high level of critical thinking, initiative and the ability to work independently, to take ownership of the role, and to use good judgment and discretion to address issues without supervision.
Essential Duties and Responsibilities
- Pro-actively manage global trademark docket including:
- Ensure docketing deadlines are met in a timely manner; routinely review monthly docket and anticipate work required to meet deadlines.
- Coordinate filing trademark applications with outside counsel
- Obtain filing details and evidence in support of statements of use, renewals, and office action responses
- Maintain and update records in docketing database.
- Assist in trademark filing strategy discussions and related due diligence
- Assist with trademark clearance projects, including U.S. screening and full searches, drafting search opinions, and communicating results to business
- Coordinate with foreign counsel and outside counsel on international clearance, filing, maintenance and renewal matters:
- Arrange for execution of formal documents required for trademark administration including brand authorization letters, powers of attorney, statements of use and renewals.
- Research potential trademark and copyright enforcement matters, including initial review of watchlist notices; preparing and submitting online takedown notices; and assisting attorneys with cease and desist letters.
Marketing Material Review:
- Review, suggest changes, and approve marketing materials (including, for example, product packaging, point-of-purchase advertising, social media and email promotional materials) with respect to copyright, trademark, and other IP considerations.
Patent Portfolio Management:
- Maintain files/records and databases for registrations and filings; work with outside counsel to update files/records and databases. Monitor deadlines for renewals, affidavits, maintenance/annuity payments, etc.
- Prepare IP portfolio reports and summaries.
IP Infringement Claims:
- Assist in-house/outside counsel and business units as needed with respect to third-party infringement claims.
- Assist with issuance of litigation hold notices and coordination of e-discovery.
- Track lifecycle of and compliance with license agreements.
- Manage submissions of any required royalty payments and reports.
- Manage the IP email in-box; communicate regularly with and maintain professional relationships with key business and marketing teams, internal legal department, and outside counsel.
- Help establish IP policies, procedures, and standard operating practices.
- Support IP-related due diligence in commercial transactions.
- Assist IP attorneys and other legal team members in execution of day-to-day IP and Legal matters
- Upload documents and emails in shared filing system.
- Supervises staff - No
- Travel – limited, based on location
Job Qualifications – Education and Experience
- Bachelor's degree required (science or engineering a plus).
- Minimum three (3) years, with a preference of five (5) or more years, of experience in trademark and patent portfolio management and prosecution, with experience in-house preferred.
- Solid knowledge of U.S. trademark and patent prosecution procedures and basic patent/trademark law and ability to relay to business functions.
- Strong written and verbal communications skills and ability to interact with various departments and levels of management.
- High level of critical thinking, initiative, and ability to work independently, take ownership, and use judgment and discretion to address issues without supervision.
- Strong organizational skills and attention to detail and accuracy.
- Capable of handling a large volume of work; sharp sense of priorities and good time management.
- Microsoft Word, Excel, PowerPoint, and related computer proficiency required. Proficient with electronic research tools such as Corsearch, USPTO and WIPO databases preferred. Proficient with USPTO electronic trademark filing systems
- Experience with Intellectual Property docketing systems
General office environment requiring ability to:
- stand, walk, sit for extended periods of time
- speak and listen to others in person and over the phone
- use keyboard and read from computer screen continuously
- lift up to 15 lbs.
About Harbor Freight Tools
In 1977, Harbor Freight Tools was started as a small family-owned business. We made a commitment to provide working people with great quality tools at the lowest prices. And for over 43 years, Harbor Freight Tools has done just that. From hand tools and generators, to air and power tools, from shop equipment to automotive tools, Harbor Freight offers more than 5,000 tools and accessories at quality levels that match or exceed competing brands, but at prices that are up to 80% less. All while developing and launching over 1,000 new tools each year. We're not your typical retailer. We're a team of high-achievers, who have a passion for excellence and continuous improvement and obsess about getting things done. We're also equally committed to doing the right thing and giving back to our community. And for us, collaboration is the golden rule. We're a 43 year-old, $5 billion company with over 1,100 stores, opening 2-3 new stores a week with over 40 million loyal customers and growing. If you are looking for a not so ordinary and highly rewarding career opportunity, we would love to talk with you. Delivering Value to the Hardworking Since 1977.
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