Intellectual Property and Privacy Paralegal (E5737) at Institute of Electrical and Electronics Engineers, Inc. in New York, New York

Job Description:

Job Summary

The Intellectual Property & Privacy Paralegal position will provide specialized support in the development and maintenance of the global intellectual property portfolio of IEEE and the global privacy program. The position manages all matters relating to the filing and maintenance of the IEEE global trademark portfolio, including reviews of potential trademark registrations, preparation of applications, and maintenance of docket listings for all trademarks and trademark applications. The Intellectual Property & Privacy Paralegal will also be involved in the enforcement of IEEE's global intellectual property rights against infringement as well as to research and respond to any infringement claims received by IEEE. This will include conducting investigations to review potentially infringing uses of IEEE copyrighted material, infringing domain names, and drafting correspondence to potential infringers as necessary. The Intellectual Property & Privacy Paralegal will report to the Senior Intellectual Property Attorney and Global Privacy Officer in the Legal and Compliance Department and work closely with IEEE officers and professional staff.

The Intellectual Property & Privacy Paralegal will also provide general support to the IEEE Legal & Compliance Department.

Key Responsibilities

• Advises staff and volunteers on the clearance, proper usage, and protection of global trademarks


• Day-to-day management and enforcement of IEEE’s global trademark portfolio


• Conducts international and domestic trademark searches


• Prepares and processes trademark applications, Statements of Use, Amendments to Allege Use, Extensions of Time to file a Statement of Use, Renewals, and Sections 8 & 15 Affidavits and Responses to Office Actions on a worldwide basis


• Review trademark searches, opinions, and related documents


• Actively managing trademark renewal, opposition, cancellation, and conflict matters


• Communicates with volunteers and staff to confirm proper use of trademarks as well as information related to policing and protection of trademarks


• Processes invoices related to trademarks


• Evaluate potential copyright infringement through the application of both copyright laws and IEEE policies


• Review websites for possible cybersquatting and domain name issues


• Drafts takedown notices in compliance with the Digital Millennium Copyright Act


• Assists attorneys with drafting of licenses, and general administrative needs including due diligence for commercial arrangements and research relating to potential legal actions


• Prepares, analyzes, and revises employment services agreements as well as ensures compliance with legal requirements for contractors.


• Collects material for litigation responses and drafts inter-parties review declarations


• Manages IEEE Legal & Compliance web presences, including helping with publishing content and maintaining continuity of themes


• Monitor Domain watchlist


• Draft cease and desist letters as needed


• Maintain accurate records of patent and trademark applications


• Stay informed about global data protection laws and regulations


• Assist in the development and implementation of privacy policies and procedures


• Respond to data subject rights requests


• Support compliance efforts related to data protection laws,


• Maintain accurate and up-to-date legal databases around data protection breaches and other privacy matters, as needed


• Draft and review legal documents, including contracts, agreements, and correspondence


• Conduct legal research on privacy and intellectual property matters.


• Prepare and organize materials for legal proceedings, including subpoenas, discovery requests, and interrogatories


• Assisting in litigation responses including collection of material and drafting inter-parties review declarations


• Maintain accurate and up-to-date legal databases


• Ensure compliance with document retention policies

Additional Responsibilities

• Collaborate with internal teams, external counsel, and stakeholders


• Communicate with government agencies, if necessary, on legal matters


• Facilitate the exchange of information between legal and non-legal teams


• Assist with legal strategic objectives and goals


• Such other duties as may be required by the General Counsel and L&C leadership


• Continuously develops personal and professional skills


• Develops and implements tools and processes to facilitate improved departmental efficiencies

Education

• Bachelor's degree or equivalent experience Req

Work Experience

• 2-4 years experience as a Intellectual Property Paralegal, ideally in a corporate setting Req


• Must have extensive experience with all aspects of the (USPTO) trademarks, preparation and filing of trademark applications, notices of opposition, foreign and domestic docketing, renewal applications, maintenance of trademark dockets and worldwide trademark portfolios, and all phases of foreign trademark prosecution

Licenses and Certifications

• Paralegal Certificate Pref

Skills and Requirements

• Experience with online searching tools, trademark docketing systems, and matter management systems


• Must communicate effectively (both verbally and in writing) with IEEE officers, professional staff, volunteers, and attorneys on a wide range of complex Trademark and IP matters while maintaining a positive and professional demeanor


• Must have strong interpersonal skills essential for the development of client relationships.


• Highly attentive to detail and resourceful, flexible, articulate, energetic, hard-working, and effective at troubleshooting


• Must be able to identify, analyze, and document trademark issues to include trademark registration, trademark infringement analysis, negotiation, and litigation and license agreements


• Ability to solve complex trademark issues with interpretation and execution of the Intellectual Property Policies and Procedures, application of online searching tools, and trademark docketing systems and matter management systems


• Ability to work autonomously under general supervision


• Ability to complete projects with minimum input or directions, take initiative in creating and improving work processes, and work effectively on a variety of matters in a fast-paced environment


• Advanced skill set in Microsoft Office to include MS Word, PowerPoint and Excel

Other Requirements:

As defined in IEEE Policies, individuals currently serving on an IEEE board or committee are not eligible to apply.

PLEASE NOTE: This position is not budgeted for employer-sponsored immigration support, this includes all persons in F (both CPT and OPT), J, H, L, or O status.

For information on work demands and conditions required for this position, please consult the reference document, "Physical, Mental, and Work Environment Standards for IEEE Positions." This position is classified under Category I - Office Positions.

All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or status as a protected veteran.

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Disclaimer: This job description is proprietary to IEEE. It outlines the general nature and key features performed by various positions that share the same job classification. It is not designed to contain or be interpreted as a comprehensive inventory of all duties and qualifications required of all employees assigned to the job. Nothing in this job description restricts management’s right to assign or re-assign duties to this job at any time due to reasonable accommodations or other business reasons.

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