Intellectual Property Paralegal
- Employer
- Brady
- Location
- Milwaukee
- Salary
- Competitive
- Posted
- Jun 07, 2023
- Closes
- Jun 13, 2023
- Practice
- Litigation
- Position
- Paralegal
- Contract Type
- Permanent
Job Description
Who Are We:
Brady Corporation is an international manufacturer and marketer of complete solutions that identify and protect people, products and places. Brady's products help customers increase safety, security, productivity and performance and include high–performance labels, signs, safety devices, printing systems and software. Founded in 1914, the Company has a diverse customer base in electronics, telecommunications, manufacturing, electrical, construction, medical, aerospace and a variety of other industries. Brady is headquartered in Milwaukee, Wisconsin and as of July 31, 2022, employed approximately 5,700 people in its worldwide businesses. Brady's fiscal 2022 sales were approximately $1.30 billion. Brady stock trades on the New York Stock Exchange under the symbol BRC. More information is available on the Internet at .
Brady offers a hybrid work option that allows for both personal flexibility and in person collaboration to deliver the greatest outcomes for our people and customers. This option is a mix of in the office and one offsite day which is pre–determined based on role and function.
What We Need:
Report to and support the Intellectual Property Attorney and other intellectual property team members by managing Brady's intellectual property portfolio, including patents, trademarks, copyrights, secrecy agreements, and licensing agreements on a global basis, as well as assisting the Corporate Legal Team.
What You'll Be Doing:
Who Are We:
Brady Corporation is an international manufacturer and marketer of complete solutions that identify and protect people, products and places. Brady's products help customers increase safety, security, productivity and performance and include high–performance labels, signs, safety devices, printing systems and software. Founded in 1914, the Company has a diverse customer base in electronics, telecommunications, manufacturing, electrical, construction, medical, aerospace and a variety of other industries. Brady is headquartered in Milwaukee, Wisconsin and as of July 31, 2022, employed approximately 5,700 people in its worldwide businesses. Brady's fiscal 2022 sales were approximately $1.30 billion. Brady stock trades on the New York Stock Exchange under the symbol BRC. More information is available on the Internet at .
Brady offers a hybrid work option that allows for both personal flexibility and in person collaboration to deliver the greatest outcomes for our people and customers. This option is a mix of in the office and one offsite day which is pre–determined based on role and function.
What We Need:
Report to and support the Intellectual Property Attorney and other intellectual property team members by managing Brady's intellectual property portfolio, including patents, trademarks, copyrights, secrecy agreements, and licensing agreements on a global basis, as well as assisting the Corporate Legal Team.
What You'll Be Doing:
- Intellectual Property Generally
- Report to and support the IP Attorney.
- Establish and maintain IP portfolio matrices and department databases, and a docket of all pertinent deadlines.
- Coordinate with internal personnel, the IP Attorney, and outside counsel to ensure all prosecution actions, maintenance deadlines, and other matters are handled in a timely manner.
- Assist the IP Attorney in training and compliance requirements related to IP issues. Assess and develop processes and procedures to continuously improve intellectual property function processes and training documents.
- Review and analyze IP portfolio for strategic maintenance to support exclusive products and licensing strategies. Coordinate with internal personnel, the IP Attorney, and outside vendors to maintain IP.
- Develop and maintain the Intellectual Property section on the company intranet.
- Assist the IP Attorney in managing the IP procurement process so as to demonstrate cost effectiveness, timeliness, and track the added value.
- Establish systems and audit, as necessary, to protect intellectual property within the company and with key vendors.
- Assist in the review, evaluation, and processing of outside counsel services and invoices.
- Assist the IP Attorney in the defense of the company's intellectual property from infringement and actively support challenging competitive intellectual property positions.
- Maintain organized files regarding all IP matters.
- Patents and Designs
- Assist in development of high value invention ideas with inventors and product managers, ensuring quick conversion to formal Invention Disclosure submissions for assessment by the IP Attorney. Increase high value invention disclosure submission rate to exceed business expectations or address shortfalls in expectations.
- Support internal teams with requests on technology/process idea submittals and patent clearance to avoid infringement issues.
- Recognize and prioritize intellectual property development of Brady's critical inventions.
- Assist in patent searching, analysis of patents, and patent pre–filing reviews. Aid in the development of business metrics on volume and status of invention disclosures. Compile patent search extract reports for IP Attorney and company leadership review.
- Assist the IP Attorney with US patent prosecution and maintenance tasks such as preparing Application Data Sheets, calculating fees for filings, filing patent applications and related documentation, identifying whether an Information Disclosure Statement (IDS) is needed, preparing and filing IDS, filing Office Action Responses, preparing and filingRequests for Continued Examination, preparing and filingAppeal documents, preparing and recording assignments, preparing and filing Inventor Oaths/Declarations, paying issue fees, preparing and filing Power of Attorneys, updating contact information, preparing and filing terminal disclaimers, and paying maintenance fees.
- Assist the IP Attorney with PCT patent prosecution tasks such as preparing and submitting filing papers, calculating fees for filings, filing responses to any Notices that may issue, preparing and filing Power of Attorneys, and updating contact information.
- Review and proofread applications and Office Action responses prepared by the IP Attorney for grammar and formatting errors.
- Pull documents and information from websites such as PAIR/the USPTO's Patent Center, WIPO's Patent Scope, the European Patent Register, or Espacenet.
- Trademarks
- Assist in trademark searching and the analysis of search results.
- Advise internal teams on trademark usage guidelines and ensure compliance with usage requirements.
- Assist the IP Attorney with US trademark prosecution and maintenance tasks such as filing applications, submitting amendments, filing Office Action responses, preparing and filing Appeal documents, obtaining and submitting specimen, preparing Statements of Use and Declarations, preparing and submitting renewal filings, preparing and filing Power of Attorneys, and updating contact information.
- Assist the IP Attorney with Madrid trademark prosecution and maintenance tasks such as filing applications, preparing and filing Power of Attorneys, updating contact information, and submitting renewal and annuity payments.
- Pull documents and information from websites such as TEAS, WIPO's Global Brand Database, and WIPO's Madrid Monitor.
- Copyrights
- Assist the IP Attorney and internal personnel in identifying strategic works for copyright applications.
- Assist the IP Attorney and outside counsel in the preparation and filing of U.S. and international copyright registrations.
- Corporate
- Assist Corporate Legal Department in the areas of acquisition and provide back–up support for the corporate legal functions.
- Work with internal personnel and external counsel to draft, interpret, edit, proofread, and negotiate the following types of agreements: Confidentiality Agreements, Professional Services Agreements, Vendor Agreements, and License Agreements.
- Bachelor's degree
- Paralegal certificate
- 4+ years' experience in Intellectual Property
- Experience managing international IP portfolios
- Ability to search trademark, patent, and business databases and analyze results
- Exceptional proven oral and written communication skills with the ability to effectively communicate complex legal information to senior management and executives
- Experience interpreting and analyzing contracts and relevant legal matters
- Demonstrated strong interpersonal, analytical, problem–solving, and organizational skills
- Strong proven talent in providing user–friendly counsel to clients
- Ability to be flexible to meet deadlines and work in both a team environment and independently
- Customarily and regularly exercise discretion and independent judgment
- Willing to learn and assist with other legal areas