IP Paralegal

  • Company: Owens Corning
  • Location: Granville, Ohio
  • Posted: November 03, 2016
  • Reference ID: 3368987
Location: Granville, Ohio - United States

The Intellectual Property (IP) Paralegal supports all patent related activities for certain business units of Owens Corning, and is responsible for various projects that include coordination and management of: (1) invention records, (2) filing, prosecution of patent applications and trade secrets,(3) renewal and patent maintenance fees worldwide, (4) Freedom to Practice and other IP analyses, (5) organizing and prioritizing numerous other IP related requests from business and innovation people in both businesses, (6) assistance with IP related agreements for Owens Corning, and (7) docketing and spend management of such activities. This position can be based in Granville, OH or Toledo, OH.
This position reports to an IP Director.

  1. Live the Safety stand, adhere to the safety responsibilities.
  2. Coordinate and manage activities for each business unit's inventions, including those filed as patents or documented as trade secrets:
    1. Prepare materials for the Intellectual Asset Management (IAM) meetings with business and innovation leaders to ensure timely review of new invention records, key prosecution deadlines, and maintenance reviews. Execute on decisions and handle any needed follow-up from such meetings.
    2. Manage the patent docket to ensure attorney(s) provide timely instructions to outside counsel and outside counsel work is received and reviewed prior to deadline. Perform docket activities for proper tracking of vital case information, as well as proper record-keeping of documents according to policy.
    3. Monitor outside counsel activities in the preparation and filing of patent applications with global patent offices. Assist in completing all filing formalities, including assignments, inventor declarations, and any additional documents necessary to ensure acceptance of the application.
    4. Review annuity and patent maintenance fee reports quarterly, audit for accuracy, communicate discrepancies with annuity service provider, and ensure payments are made accordingly. Beyond the quarterly review, address any annuity payment issues with annuity service provider.
    5. Assist the IP Attorneys in the process for identifying and documenting trade secrets. Manage outside counsel activities in the preparation of trade secret documentation.
    6. Run reports from patent database as may be requested or needed by IP Attorneys or IP Team.
  3. Provide paralegal support in other IP matters:
    1. Assist IP Attorneys in Freedom to Practice searches and opinions, invalidity opinions, drafting and management of IP-related agreements, and other non-patent application general matters. Communicate with outside counsel and internal clients as necessary. Maintain file of activity in patent database and paper copy file.
    2. Assist IP Attorneys in re-examination, re-issue, litigation or opposition proceedings conducted for the business. Communicate with outside counsel and internal clients as necessary. Maintain file of activity in patent database and paper copy file.
    3. Assist IP Attorneys with patent landscape, competitor analysis, and design-arounds conducted for the business. Prepare reports and presentations as needed.
  4. Manage the costs for each business unit:
    1. Process invoices in the e-billing software, audit to ensure charges are appropriate and charged to the correct business. Review statements received, and address any issues related to the payment of the invoices. Record and track costs according to department procedures.
    2. Monitor business' spend against the budget, report the current accrual and expected forecast, communicating any potential overspend.
  5. Support development of internal procedures to ensure compliance with applicable timelines and legal requirements.
  6. Provide paralegal support to the IP Attorneys and act as a liaison between IP Team and in-house clients and outside firms and OC headquarters.
  7. Maintain professional growth by participating in educational programs and activities to stay abreast of changes in field of expertise.
  • Adheres to Owens Corning safety policies at all times
  • Demonstrates ability to independently manage the patent docket
  • Understands basic IP law and demonstrates ability to accurately interpret regulations
  • Demonstrates ability to manage and coordinate non-patent prosecution related IP matters
Job Requirements

  1. Bachelors Degree and/or Paralegal Certification preferred.
  2. Proficiency in case management (intellectual property case management preferred).
  3. Experience performing legal and other research in a wide variety of subject areas, including intellectual property and patents.
Knowledge and Abilities:
  1. Familiarity with US, Patent Cooperation Treaty (PCT) regulations and international country rules and procedures related to patent filings and regulatory submission preferred.
  2. Familiarity with IP-related matters beyond patent filings, such as trademarks, agreements, litigation proceedings preferred.
  3. Highly proficient knowledge of internet software, spreadsheet software, word processing software, Microsoft office suite, database/reporting.
  4. Project management experience preferred.
Personal Characteristics:
  1. Exceptional attention to detail.
  2. Ability to maintain confidentiality and high ethical standards.
  3. Exceptional English communication skills (verbal and written).
  4. Strong organizational skills and ability to prioritize workload.
  5. Ability to handle high-stress situations.
  6. Demonstrated ability to establish and maintain effective working relations with others.
  7. Intellectual curiosity.
  8. Demonstrated ability to learn, develop and grow professionally.
  9. Flexibility to work beyond normal business hours when necessary.
About Owens Corning
Owens Corning (NYSE: OC) develops, manufactures and markets insulation, roofing, and fiberglass composites. Global in scope and human in scale, the company's market-leading businesses use their deep expertise in materials, manufacturing and building science to develop products and systems that save energy and improve comfort in commercial and residential buildings. Through its glass reinforcements business, the company makes thousands of products lighter, stronger and more durable. Ultimately, Owens Corning people and products make the world a better place. Based in Toledo, Ohio, Owens Corning posted 2015 sales of $5.4 billion and employs about 16,000 people in 25 countries. It has been a Fortune 500® company for 62 consecutive years. For more information, please visit www.owenscorning.com .A career at Owens Corning offers the ability to enhance your expertise and achieve your personal and professional aspirations. Through it all, we'll empower you with an environment that encourages open communication and big ideas, competitive pay for your performance, comprehensive benefits, and more opportunities to make your impact.
Must be eligible to work in the U.S. on a permanent basis.
Owens Corning is an Equal Opportunity, Affirmative Action employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, protected veteran status or status as an individual with a disability.

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