Intellectual Property Paralegal

Johnson Service Group, a nationally award-winning staffing firm, has an immediate opportunity for an IP Paralegal for a global medical device organization in Santa Barbra, CA.

Contract Role | Hybrid depending on where you live.

Summary: The Senior IP Paralegal will conduct patent and trademark legal research under the direction and guidance of a Patent Attorney or Patent Agent for patent matters and a Trademark Attorney for trademark matters; draft and file various legal documents with the US Patent and Trademark and WIPO Offices; docket IP portfolio due dates and associated tasks; provide IP or general legal administrative support as required; conduct and/or initiate trademark availability searches and provide trademark awareness training to the business; lead continuous improvement projects directed to improving the Global IP Teams ways of working and operational efficiencies; and manage and drive IP or general legal projects periodically assigned by the Supervisor.

• Key Responsibilities: Support docketing, prosecution, enforcement, and maintenance of global patent portfolios being managed from the U.S., as well as supporting the U.S. prosecution of patent applications being managed from Europe, including driving compliance with all of the formality requirements (e.g., priority documents, POAs, assignments, inventor declarations, etc.) and preparing and filing patent applications and office action responses with the USPTO and WIPO.
• Support docketing, prosecution, defense, and maintenance of trademark portfolio in the Americas, including facilitating the preparation, filing, and prosecution of new and existing trademarks, which includes preparing and filing responses to office actions, supporting oppositions to Company's marks, collecting specimens of use to facilitate trademark renewals, and conducting trademark availability searches.
• Defend company's trademark portfolio and branding strategy in the Americas via oppositions, takedown requests, cease and desist letters, etc.
• Liaise with external agents to facilitate the procurement and defense of company's Intellectual Property.
• Manage and drive projects directed to IP or general legal topics assigned by the Supervisor, which includes portfolio pruning projects, cost containment projects, improving ways of working, conducting legal research, etc.
• Support generation of patent and trademark analytics to facilitate creation and refresh of patent and trademark strategy for the Americas as well as the global organization.
• Provide and/or support IP awareness training for the business, as well as review commercial and marketing materials for correct usage of company branding elements and proper treatment of and respect for third-party branding and copyrights.
• Lead ways of working alignment with the Global IP Team, and drive creation of an IP Team Manual that memorializes the US Teams ways of working.
• Support drafting and management of non-disclosure agreements.
• Train and mentor less experienced paralegals in the US Legal Team as well as the Global IP team.
• Help manage outside legal counsel and provide administrative support to KSUS Legal Team, as may be required from time-to-time.
• Will spend part of his/her time as a member of continuous improvement teams undertaking projects and seeking ways to improve the quality of KSIs products and services.

Qualifications & Requirements:

• Proficient in IP law and procedures, with strong understanding of USPTO, Madrid Protocol, and WIPO rules, deadlines, benefits, and procedural requirements.
• Excellent organizational skills with the ability to manage multiple priorities and maintain attention to detail in a fast paced environment.
• Strong communication skills (both written and verbal), capable of effectively interacting with members of the global legal and IP teams, stakeholders in the business, patent and trademark examiners, vendors, and external agents, and the ability to work collaboratively.
• Proficient in IP management software and databases, as well as Microsoft Office Suite.
• Ability to work under pressure and meet tight deadlines.
• Capable of focusing for extended periods of time while performing desk-based tasks.
• Very detail-oriented working style that supports proficient preparation of very detailed technical and legal documents and reviewing same with minimal mistakes.
• Flexibility to adapt to changing priorities and new challenges.

JSG offers medical, dental, vision, life insurance options, short-term disability, 401(k), weekly pay, and more. Johnson Service Group (JSG) is an Equal Opportunity Employer. JSG provides equal employment opportunities to all applicants and employees without regard to race, color, religion, sex, age, sexual orientation, gender identity, national origin, disability, marital status, protected veteran status, or any other characteristic protected by law.