Paralegal

GAF Materials CorporationParsippany, New jerseyFull TimeOn Site


Working closely with in-house IP attorneys in the Legal Department, the IP Paralegal provides organizational and practice specific assistance to attorneys in the IP practice in managing patent and trademark prosecution matters including related research, analysis, docketing and eFiling. The individual in this position reports to Senior Patent Counsel and also supports Senior Trademark Counsel.

ESSENTIAL DUTIES

Day to Day IP Management (95%)

Manages all aspects of U.S. and foreign patent and trademark prosecution processes Proofs patent forms and documents, including, but not limited to, applications, information disclosure statements, amendments and responses to Office Actions, Notices of Allowance, and trademark registration maintenance documents

Coordinates inventor assignments and declarations

eFiles with the U.S. Patent and Trademark Office and prepares reporting letters to inventors Manages docket with significant awareness of and sensitivity to time management and filing deadlines

Manages and updates files with USPTO PAIR and TESS databases and prepares recommendations for updates as needed

Processes payment of patent Issue Fees

Coordinates national phase entry of PCT applications with outside counsel

Corresponds with foreign associates concerning all aspects of prosecution, oversees payment of foreign associates' invoices, and prepares reporting letters to client

Assists in prosecution of U.S. and foreign design patent applications (including convention deadlines for filing abroad)

Tracks chain of title in U.S. patents and trademark registrations and ability to perfect same Conducts trademark clearance searches

Obtains specimens in support of trademark portfolio

Meets internal and external deadlines, and successful time management

Assists and supports the department with general administrative duties and special projects related to IP matters as assigned

Other General Duties (5%)

• Provides assistance to other paralegals, legal secretaries and attorneys when necessary to meet department needs, and performs other duties as assigned.

LEVEL BASED COMPETENCIES:

Adaptability

Building Strategic Working Relationships

Technical/Professional Knowledge & Skills

Stress Tolerance

Planning & Organizing

Communication

Technical knowledge/skills (entry, intermediate, advanced)

Advanced knowledge of U.S. patent and trademark rules and procedure; knowledge of PCT and/or national laws of other countries

Proficiency with Public and Private PAIR and IP docketing databases.

Proficiency with Google Suite (Docs, Sheets, Forms, and Slides)

Familiarity with IP docketing platforms is required

General knowledge/skills (entry, intermediate, advanced)

Advanced organizational skills with an eye for detail

Ability to follow through tasks to completion

Self-motivated, with ability to work efficiently, either independently or in a team environment Advanced communication skills, both verbal and written

Education/Experience

Minimum five (5) years of relevant work experience in a professional environment; both law firm and in house experience preferred

College Degree required

Paralegal certificate required

We are taking a responsible approach to creating environments that allow us to do what we do best – Protect what matters most.

As part of our commitment to health and safety, COVID-19 vaccines are required for all candidates and employees in this position. Proof of vaccination is required. Should you require accommodation for medical or religious needs, GAF will engage in an interactive process with you to determine if a reasonable accommodation can be provided in accordance with applicable state and federal law.

We believe our employees are our greatest resource. We offer competitive salary, benefits, 401k, and vacation packages for all full time permanent positions. We are proud to be an equal opportunity workplace and GAF, SGI, and Siplast are proud to be affirmative action employers. We are committed to equal employment opportunity regardless of race, color, ancestry, religion, sex, national origin, sexual orientation, age, citizenship, marital status, disability, gender identity, or Veteran status. If you have a disability or special need that requires accommodation, please let us know. If applying for positions in the U.S., must be eligible to work in the U.S. without need for employer sponsored visa (work permit).

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