Lead Specialist Intellectual Property - Libertyville, IL

Summary

The Lead Specialist Intellectual Property provides high-quality intellectual property support to the Assistant General Counsel/Chief IP Counsel, the IP Law team, and the Law Department, including overseeing invention disclosures, patent and trademark prosecution, and the global patent and trademark portfolio. The responsibilities include product name clearances, patent searches, meeting organization and management, trademark use on marketing and packaging materials, and assistance in patent and trademark disputes, oppositions, cancellation proceedings, and litigation matters.

This position is based in Libertyville, IL with an onsite requirement of 4 days in office weekly.

Responsibilities

Managing the process for creation and maintenance of invention disclosures and patent records, including:

• Interfacing with outside patent counsel worldwide and company business units
• Managing the maintenance of the invention disclosure and patent databases ensuring a high degree of accuracy 
• Organizing and managing Patent Subcommittee meetings with the Continence Care and Ostomy teams
• Ordering Patentability and Freedom to Operate searches on Invention Disclosures
• Organizing and managing meetings between inventors and outside counsel to review search results and discuss future courses of action
• Interfacing with inventors, and provide status of their inventions and patent applications based on business recommendations
• Communicating with outside counsel and assist in obtaining any addition information that Outside Counsel may require
• Coordinating payment of our annuity/maintenance fees with our outside annuity provider by researching and reviewing with the IP team our patent portfolio to determine if annuity/maintenance fees should be approved for payment
• Supporting the Intellectual Property Budget process, including setting matter budgets, confirmation of billed work, and adherence to negotiated fees
• Generating reports from the patent, invention disclosure, and electronic invoice databases for budget planning, R&D patent recognition awards, inventor and business unit requests, and general statistics of invention disclosure and patent activity
• Provide training regarding invention disclosure and patent process to R&D and other functions

Managing the processes for creation and maintenance of trademark records and copyright permissions, including:

• Managing the filing and administration of our US and international trademark portfolio and maintain the database of our global trademark portfolio
• Reviewing, on a yearly basis with product and/or country managers, trademarks due for renewal to determine renewal or abandonment
• Performing preliminary trademark screening searches and coordination of full searches and opinions prior to filing applications
• Managing the filing of new trademark applications in conjunction with outside counsel
• Representing Intellectual Property Law Function in Marketing Approval Process (MAP) by reviewing and enforcing proper use of trademarks (including third party marks) in corporate brochures, websites, instructions for use, and product labels
• Reviewing trademark watch notices and conduct research for trademark disputes including oppositions, cancellations, and improper use of our trademarks
• Responding to requests for trademark information from other departments (Product Managers, Global Marketing, Packaging and Labeling) by generating reports from the trademark database
• Managing third party copyright usage process.

Essential Functions of the Role

Education & Work Requirements

Education & Work Preferences

• 4+ years of IP experience preferred
• Paralegal Certificate preferred
• Self-motivated, creative, strong organizational skills with emphasis on attention to detail, and ability to maintain confidentiality
• Possess excellent written and verbal communication skills
• Knowledge of domestic and foreign intellectual property practices within a corporate law environment
• Knowledge of IP database management software and proficiency in Microsoft Outlook, Excel, Word, SharePoint, and Legal Tracker
• Strong analytical skills and demonstrated ability to use those skills and good judgment to make decisions
• Able to work independently with minimal supervision
• Ability to prioritize and manage multiple tasks and meet deadlines in a fast-paced, detail-oriented work environment
• Strong customer focus
• Reliable team member who can organize and manage productive meetings
• Ability to consistently deliver high-quality work under pressure

Competencies