Senior IP Specialist at Matthews International Corporation in Pittsburgh, Pennsylvania

Job Description:

POSITION SUMMARY

The Senior IP Specialist will work directly with the Matthews' legal team to develop efficient and sustainable process and management systems for complex innovation information and data. This role is responsible for a variety of critical intellectual property support functions including managing IP assets, litigation and their related documents and deadlines, fostering outside counsel relationships, collaborating on high priority projects related to IP management and reporting, developing operational processes and procedures, and assembling training and education materials.

JOB RESPONSIBILITIES

• Respond to various IP requests from business teams such as patent FTO's and trademark clearance searches, portfolio management, litigation, enforcement, licensing and other general IP issues.
• Engage with outside counsel firms, including task assignment, coordinate searches, filings and deadline management.
• Implement process improvement related to vendor billing, budget tracking, and forecasting.
• Develop and administer workflows between R&D, business, and outside counsel.
• Implement technology solutions to practice of in-house IP function, including exploration of alternative service providers and tools for automation.
• Assist with preparing standard forms and templates for IP workflows.
• Work with counsel to develop training materials for the business on compliance & IP
• Coordinate correspondence and meetings between outside counsel and in-house stakeholders.
• Administer IP Committee meetings and Project Stage-gate Reviews.
• Develop integration efforts to in-take new IP portfolios that result from acquisitions and work with outside counsel to maintain integrity of IP portfolio; and perform duties related to other special projects as required.
• Oversees legal responsibilities regarding dissolutions, mergers, and acquisitions as related to IP.
• Gathers and analyzes research data, such as statutes, decisions, and legal articles, codes related to IP.
• Organizes and manages documents and information available in electronic IP management system for maintenance and informational purposes.

QUALIFICATIONS / REQUIREMENTS

• Paralegal Certificate/Diploma or Bachelor's Degree in Paralegal studies is required
• 6+ years of previous in-house paralegal experience in addition to 2+ years of legal operations experience
• High degree of attention to detail and the ability to multi-task and manage time efficiently with minimal oversight.
• In-depth knowledge of patent and trademark processes.
• Must be a process-oriented self-starter and problem solver, with going the extra step to keep matters advancing.
• Must have experience working directly with business partners and R&D, marketing, compliance and finance teams.
• Must have experience in process improvement
• Experience managing a global trademark docket of no less than 500 marks, where the marks are with our outside counsel firms;
• Experience managing a global patent docket of no less than 1000 applications, where the applications are filed with our outside counsel firms.
• Occasional travel either locally, nationally, and/or internationally may be required.
• Knowledge of compliance and IP law and in-house/law firm experience is essential.
• Experience with implementing and managing IP legal database systems (e.g., IAMIP, AppColl, CPA, Clarivate)
• High degree of proficiency in MS Office Suite, Outlook & Internet applications.
• Strong analytical, prioritizing, interpersonal, problem-solving, presentation, budgeting, project management (from conception to completion), & planning skills.
• Exceptional verbal and written communication skills (including analysis, interpretation, & reasoning).
• Solid understanding and application of mathematical concepts.
• Ability to develop and maintain collaborative relationships with peers and colleagues across the organization, as well as, internal and external clients.
• Ability to work well autonomously and within a team in a fast-paced and deadline-oriented environment.
• Ability to work with and influence peers and management.
• Self-motivated and proactive with critical attention to detail, deadlines and reporting.

PHYSICAL ASPECTS / WORK ENVIRONMENT

• Regularly required to stand; walk; sit; talk, hear and see.
• Occasionally lift and/or move up to 10 pounds.

* Reasonable accommodations may be made to enable individuals to perform the essential functions.

Matthews International is an Equal Opportunity Employer

At Matthews International, we believe in a world of inspired possibilities. We believe that taking pride in our past inspires growth for the future. And that we all have a responsibility to explore new ways of thinking, working and advancing our craft.

Globally headquartered in Pittsburgh, Pennsylvania, Matthews International is home to a global network of employees operating in three distinct industries-SGK Brand Solutions, Memorialization and Industrial Technologies. We care deeply about what they do each day-because when we're inspired, we can inspire others. We can make difference that goes beyond expectations-for our clients, our community and our company.

Our dedication, drive and determination empower creativity and give us strength to transform inspired possibilities into inspiring realities. This is strengthened by our values which are fundamental to our business and guide how we work-to demonstrate integrity, cultivate employees, be our best, innovate and live the Matthews spirit.

www.matw.com

Matthews International affords equal employment opportunities to employees and applicants without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, genetic information, age, disability or any other characteristic protected by federal, state or local law. Equal Opportunity Employer Minorities/Women/Veterans/Disabled.

Matthews International endeavors to make our employment website and application process accessible to all users and applicants. In doing so, Matthews International provides reasonable accommodations to applicants with disabilities. If you have a disability and require a reasonable accommodation or assistance completing the application process, please contact a member of our Human Resource Team.

At Matthews International, what makes us different is what makes us great. We are proud to be an equal opportunity workplace. All employment is decided on the basis of qualifications, merit, and business need.