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Trademark/Intellectual Property Paralegal

📁
Legal
💼
Corporate
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1801718 Requisition #

Itron is seeking a Paralegal, preferably with formal certification, to assist in the development and management of Itron's global trademark portfolio, as well as other intellectual property assets and matters. You must be exceptionally detail oriented to ensure accuracy of information in internal systems, development of and compliance with internal processes and process controls, and timely filings. You must be proactive in identifying organizational needs required for adequate protection and maintenance of Itron’s trademark portfolio, and be self-motivated to work within the organization to fulfill those needs.  You will coordinate with in-house and outside counsel, and with Itron’s business units, to ensure timely decision making and fillings associated with all registrations and renewals and trademark usage reviews.  You will also manage external budgets and review/approve invoices for associated trademark activities. This position will also include some support of Itron’s patent and patent litigation matters, primarily related to opening matters within Itron systems, file maintenance, and tracking related vendor invoicing and payments.  Other opportunities related to the daily operation of Itron’s Legal department may be available with commensurate experience or ability and interest.


Job Duties & Responsibilities:


  • Accurately docket all trademark prosecution, relevant communications, and manage all trademark docket deadlines (e.g. timely submission of renewals, payment of fees, etc.) 
  • Actively manage the trademark docket (e.g. timely submission of renewals, payment of fees, etc.)
  • File pre-registration & post-registration papers & instruct outside counsel & vendors regarding trademark maintenance
  • Draft trademark applications, affidavits, office action responses and additional petitions and file directly with the United States Patent and Trademark Office (USPTO)
  • Set up matters/records in appropriate internal systems (e.g. docketing and e-billing systems) and ensure accuracy and completeness of information in the same 
  • Maintain trademark, patent & copyright physical & electronic files
  • Review product labeling, marketing materials, websites, external presentations and press releases for proper trademark usage
  • Conduct trademark searches and related diligence
  • Provide support in gathering and organizing substantiation for global IP related disputesSupport IP counsel with infringement, trademark opposition and domain name disputes, including drafting cease and desist letters and UDRP complaints and gathering evidence and organizing substantiation for global IP related disputes
  • Review trademark and domain watch notices and report on actionable infringements
  • Communicate cross-functionally with internal teams with respect to usage and status of trademarks, domains and related intellectual property interests 
  • Facilitate the transfer of intellectual property assets as related to divestitures, mergers and acquisitions and recording the appropriate documents for transfer of IP ownership.
  • Maintain/update trademark docketing procedures
  • Ensure timely review, approval, and payment of vendor invoices pertaining to various intellectual property matters

Experience:

  • Minimum of 3-5 years’ trademark domain experience at law firm or corporation (preference given to experience at larger organizations), including US and international trade trademark prosecution and portfolio management, searching and clearance, oppositions and cancellations and licensing
  • Knowledge of patent, trademark, and copyright laws, and of US and international prosecution rules and procedures
  • Knowledge and fluency with use of a trademark docketing system (experience with Foundation IP a plus)
  • Familiarity with in-house legal e-billing systems (preference given to experience with Legal Tracker)
  • Familiarity with in-house records management/retention systems (experience with SharePoint a plus)
  • Proficiency with Microsoft Office 365 suite of programs, including at a minimum Word, Excel, Outlook and PowerPoint
  • Exceptional attention to detail and organizational skills
  • Ability to work concurrently and efficiently on a variety of projects
  • Ability and willingness to work independently and meet deadlines, while also being a team player to assist where needed
  • Strong communication and writing skills
  • Commitment to professionalism and collegiality

Education: Bachelor's degree in a related field is preferred.


Travel: 5-10%


Itron is an Equal Opportunity, Affirmative Action Employer. Qualified applicants are considered without regard to race, color, religion, sex, age, national origin, citizenship, sexual orientation, marital status, pregnancy, medical condition, veteran status, disability, genetic information or other characteristics protected by law. If you require an accommodation in order to apply to this position, please contact your local recruiting representative at 1-800-635-5461 or email Accessibility@itron.com.  

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Itron is an Equal Opportunity Employer
Itron will make reasonable accommodation to assist a qualified person with a disability in the job application process. If you need assistance and would like to request a special accommodation, please contact accessibility@itron.com or at +1-509-924-9900 USA. For more information on Equal Employment Opportunity, please click here.

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