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IP Legal Analyst

Posted Sep 20
Full Time
Melbourne, Florida

_Job Title: IP Legal Analyst

_ _Job Code: 15974

_ _Job Location: Melbourne, FL

_ _Job Schedule: 9/80: Employees work 9 out of every 14 days – totaling 80 hours worked – and have every other Friday off

_ Job Description:

The Intellectual Property (IP) Legal Analyst will support the IP legal team in the management of the company’s large US patent portfolio, overseeing the internal patent database, and coordinating with outside counsel. The role involves ensuring efficient handling of innovation disclosure capture, patent prosecution, and patent maintenance to align the portfolio with strategic business goals. The analyst works via close collaboration and proactive support with a close-knit team of experienced IP attorneys and professionals and will build broad expertise in strategic IP asset creation, management, and monetization.

Essential Functions:

  • Manage and regularly utilize in-house patent database, including generating detailed reports and analysis of the portfolio for IP asset monetization and portfolio optimization efforts
  • Review innovation disclosures and support disclosure capture, evaluation, and patent application filing process
  • Process inventor awards and coordinate with payroll and finance to ensure timely and accurate payouts
  • Manage the annuity payment process and assist in-house counsel with patent scrubs and portfolio optimization
  • Maintain a clearinghouse copyright license for the enterprise
  • Work closely with in-house and outside IP counsel to coordinate the filing of applications and responses to USPTO activity
  • Analyze formal USPTO communications and oversee submitting appropriate responses or corrections
  • Analyze various legal documents for accuracy
  • Manage the company’s USPTO deposit account and ensure that all necessary USPTO fees are paid
  • Assist with drafting responses to USPTO Office Actions, analyze and approve outside counsel response strategy and proposed responses
  • Analyze outside counsel spend and invoices to support the management of outside counsel relationships and billing
  • Draft external and internal correspondence, various documents, presentations, organize and maintain office administrative files
  • Manage other projects and perform other administrative duties as required
  • Travel less than 5% required

Qualifications:

  • Bachelor’s Degree and a minimum of 2 years of prior related experience. Graduate Degree or equivalent with 0 to 2 years of prior related experience. In lieu of a degree, minimum of 6 years of prior related experience.

Preferred Additional Skills:

  • Paralegal certification preferred
  • Expert in MS Word, Outlook, Excel, and PowerPoint
  • Strong attention to detail, interpersonal skills and ability to maintain confidentiality
  • Ability to adapt, establish task priorities, able to work independently with minimum guidance, be well-organized and provide maximum attention to detail
  • Must have excellent communication skills with other employees and corporate management, quality commitment, a willingness to work in a team environment and total customer focus
  • Prior substantive IP experience in a legal department or law firm environment a plus