Paralegal – Trademarks and Patents

Job Description

Job Summary:

Western Digital’s intellectual property (including patents, trademarks, designs, logos and slogans) are valuable assets that are vital to the Company’s success and reputation, allowing Western Digital to distinguish itself in a competitive market. Western Digital’s global Patent and Trademark teams focus on obtaining, protecting and managing its ever-expanding patent and trademark portfolios. 

This role will be responsible for supporting both the Trademark and Patent legal functions, working alongside senior attorneys and program manager for the strategic development of Western Digital’s worldwide IP portfolios.  The position reports to the Company’s Senior Program Manager responsible for global Trademark prosecution.

ESSENTIAL DUTIES AND RESPONSIBILITIES

Trademark Prosecution:

• Support the management of the Company’s global trademark portfolio, including preparation of applications, maintenance of the portfolio and identification and escalation of certain related matters and issues within the Trademark team.
• Partner with attorneys and program manager to implement procedures, improvements and safeguards for maintaining the docket and timely responding to USPTO and foreign trademark registry requirements.
• Collaborate with internal clients to obtain information and drive the trademark application lifecycle from clearance to drafting to registration and maintenance in order to meet time-sensitive deadlines.
• Support trademark opposition and cancellation actions, including actions before the TTAB.
• Develop, track and communicate department metrics, including status and activity reports.
• Assist program manager in review and approval of invoices and tracking the department budget.

Patent Prosecution:

• Manage invention disclosures in online management systems.
• Assist inventors with submission issues, status inquiries, and invention submission process steps.
• Prepare for and facilitate invention disclosure review meetings.
• Assign patent filings to outside counsel and assist with outside counsel management post-assignment/filing.
• Assist in patent team operational tasks such as report generation, award payment instructions, and renewal and foreign filing instructions.
• Assist with invoice review, patent budget planning, inventor award distribution, and award event coordination.

Qualifications

• Bachelor’s Degree.  Paralegal certificate from ABA-approved program preferable, but not required.
• 5+ years relevant professional experience, preferably in an intellectual property department at either a technology company or a top tier law firm (combination of law firm and corporate settings preferred).
• Exceptional organizational skills and analytical and problem-solving skills.
• Excellent interpersonal communication (both written and oral) skills.
• Knowledgeable regarding intellectual property (IP) asset management tools (e.g., Anaqua, Foundation IP and Orbit).
• Knowledgeable regarding Microsoft Office suite, in particular Excel and PowerPoint.
• Able to adapt to change and learn new systems or processes, as well as an interest in learning new technology and technology products.
• Familiar with the intricacies of the IP asset procurement process.
• Able to identify creative ways to improve the IP capture and development process.
• Perform work efficiently under moderate to light supervision.
• Dependable, competent, trustworthy, self-motivated and efficient.