IP Paralegal
ITT Inc.

Job Info

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Position Summary

The Intellectual Property Paralegal will provide paralegal support to the Deputy General Counsel and s/he will independently perform various assigned ongoing (administrative) tasks in the field of intellectual property, including communication with outside law firms and internal stakeholders.
Essential Responsibilities

Patent and Trademark Filing, Prosecution and Maintenance

• Overall responsibility for administration related to all US and non-US filing, prosecution and maintenance matters for patent and trademark portfolio
  • Regular interaction with R&D leads, engineers and patent liaisons across the business for instructions and decisions on filing, prosecuting, maintaining and protecting technical innovations
  • Organize periodic reviews of patents due for renewal by business units and coordinate meetings for discussions on patents to be renewed/abandoned; forward patent renewal information quarterly to designated service provider
  • Manage Company trademark portfolio by coordinating with internal marketing/branding team, trademark liaisons, and outside counsel for filing, prosecution and maintenance of trademark portfolio
  • Create form letters during patent and trademark prosecution process, e.g. request to business unit for foreign filing, validation of countries, inventor bonus payments etc.
  • Timely tracking and collection of documentation and signatures required for filing, prosecution and maintenance of IP portfolio, including assignments and Powers of Attorney
  • Frequent communication with outside counsel around the world on various tasks, such as instructions for filing, prosecuting, renewing and enforcing patents and trademarks
• Assist in monitoring IP budget, including accurate accruals
  • Ensure that invoices are processed for payment in a timely manner
  • Review outside counsel and other vendor invoices for accuracy
• Maintain company's intellectual property files and records, electronic and hardcopy. In particular, manage emails in the IP email box, and recording or updating data on patent and trademark applications in ITT's Patent and Trademark Databases
  • Run reports on company's patents and trademarks and compile data as needed
  • Assist in creating the Quarterly IP report, quarterly update of ITT Patent Handbook and quarterly update of ITT Trademark Handbook
  • On a quarterly basis, provide reports (extracted from IP database) to HR for inventor bonus payments
• Assist in preparation of legal documents specific to intellectual property, general correspondence and special reports as needed

Other Responsibilities

• Coordination of Confidentiality Agreement process, including entry of new agreements into ITT NDA Database; support in obtaining signatures and ensuring signed copies are uploaded
• As requested, provide litigation support, including implementing legal holds, assisting with discovery requests and responses, service of process and case administration

Position Requirements

• Bachelor's degree preferred, paralegal certificate a plus. Minimum 5 years of experience as an intellectual property paralegal in a law firm or corporate environment (with at least a portion of that experience in a corporate environment)
  • Requires knowledge and understanding of US and international intellectual property laws, including their procedural requirements
• Advanced proficiency in IP database applications (Anaqua preferred)
• Highly organized; manages her/his time efficiently and prioritizes work appropriately
• Strong project management skills
• Solution-orientated self-starter who can drive outcomes, with a can-do and will-do attitude
• Highly-motivated, proactive, flexible, detail-oriented, with the ability to work well in a team environment
• Ability to multi-task, quickly learn new information; works well under pressure and handles confidential matters with discretion
• Advanced proficiency in all Microsoft Office applications including, Outlook, Word, Excel and PowerPoint. Understanding of accounting software, such as SAP is preferred

Key Competencies

• Clear, concise communicator; adept at tailoring communications to the audience (e.g., IP technical experts and non-technical experts; engineers and non-engineers)
• Strong work ethic
• Strong business acumen; shows clarity of thought and drives execution
• Comfortable with hands-on approach to addressing complex problems to gain a grounded and granular understanding, make informed decisions and take appropriate actions
• Passion for renewal and continuous improvement to drive performance and innovation
• Embraces transparency as an important operating principle
• Able to lead and drive change (challenge status quo, flawless execution, influencing skills)

About the Company:

Headquartered in White Plains, N.Y., ITT Inc. has employees more than 35 countries and sales in approximately 125 countries. The company generated 2020 revenues of approximately $2.5 billion and has 10,000+ employees around the globe. In early 2022, ITT will be moving its global headquarters to a new state-of-the art facility in Stamford, CT.

ITT was named to the Forbes 2019 list of America's Best Midsize Employers. This achievement recognizes ITT's focus and commitment to fostering a healthy, high-performing culture and creating a workplace defined by innovation and continuous improvement. ITT's CEO and CFO were both recognized as 2020 All-America Executive Team by Institutional Investor magazine. ITT was also awarded the 2018 Manufacturing Leadership Award which distinguishes ITT for its visionary leadership, commitment to employees and workplace culture, and ability to innovatively solve problems for customers.

ITT operates through three Value Centers (business units):

Industrial Process (2020 Revenue of $900M; headcount of 2,500; operates in 30 countries) designs and manufactures pumps, valves, monitoring and control systems, water treatment and aftermarket services for the chemical, oil and gas, mining and other industrial process markets, as well as global service capabilities;

Motion Technologies (2020 Revenue of $1.1B; headcount of 4,700; operates in 12 countries) designs and manufactures brake pads, shock absorbers and sealing solutions for the automotive and rail markets;

Connect and Control Technologies (2020 Revenue of $500M; headcount of 2,500; operates in 10 countries) designs and manufactures harsh-environment connectors and critical energy absorption and flow control components primarily for the aerospace, defense and industrial markets.

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