Intellectual Property Assistant

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POST DATE 9/14/2016
END DATE 11/2/2016

Stanley Black & Decker Towson, MD

Towson, MD
AJE Ref #
Job Classification
Full Time
Job Type
Company Ref #
Mid-Career (2 - 15 years)
Bachelors Degree


Job Description

Job Description
To provide administrative support for Group and Senior Group Patent Counsels.

Principal Job Activities
* Review all incoming Official Actions from U.S. Patent and Trademark Office and PCT Office and from foreign agents for completeness, urgency and response required. As instructed by attorney, arrange for drawing corrections and formal drawings to be timely made by outside draftspersons where appropriate, and follow-up with outside draftsperson to ensure corrections are done on time. As directed by attorney, communicate with U.S. Patent and Trademark Office officials and foreign agents to correct discrepancies in filing date and inventor information, to obtain missing references, and (in certain PCT matters) to obtain extensions of time.
* Draft design appearance patent applications in accordance with government Rules of Practice. Assist attorney in arranging for new products to be photographed from multiple angles to form bases for design appearance and utility patent applications.
* Type and assemble patent and trademark applications, amendments, briefs and appeals, all in accordance with government Rules of Practice, and under direction of attorney
* Working from applications filed in the U.S. Patent and Trademark Office, prepare applications for foreign patents, including necessary specifications, drawings, and claims, and at attorney direction, correspond with foreign agents and arrange for execution and legalization of petitions, assignments and other required documents, all in accordance with applicable government rules of practice.
* Maintain and monitor file of action due dates to assure no loss of intellectual property rights, and communicate due-dates to attorney. Follow up with inside and outside counsel to expedite timely responses to actions.
* Perform searches of patent and trademark databases to locate U.S. and foreign patents and trademarks of competitors and their parents and subsidiaries, for particular products of interest to Stanley Black & Decker attorneys and project teams.
* Set up and maintain files for invention and trademark disclosures, patent and trademark applications, issued patents and registered trademarks as well as agreements, correspondence, acquisitions, divestitures, investigations and litigation.
* Compose other draft correspondence to individuals inside and outside the Company for signature by attorney. Type and assemble license agreements, contracts, releases, assignments, opinions and other legal documents
* Perform administrative duties including typing, taking dictation, transcribing from tape, preparing overheads, charts and tables, answering telephone, receiving and distributing mail, photocopying, faxing, receiving visitors, scheduling appointments and meetings and making travel arrangements.
* Prepare periodic (monthly and/or annually) statistical reports on patent and trademark filings, grants, cases pending and other desired data.

Education / Experience
* Extremely organized ability to time manage oneself as well as others
* Detailed oriented
* Ability to work independently on complex projects and demonstrate excellent grammatical and compositional ability.
* Work well under deadlines and be able to establish and follow priorities.
* PowerPoint, Word, Excel, and Outlook skills a must
* Demonstrated performance in current position.
* Prior legal/paralegal experience
* Bachelor s degree preferred
* 2 - 3 years of patent or trademark experience in consumer products organization preferred

* Less than 10% Travel

EEO Statement
All qualified applicants to Stanley Black & Decker will receive consideration for employment without regard to race, religion, color, national origin, sex, sexual orientation, veteran's status, age, disability or any other characteristic protected by law.

EEO Statement All qualified applicants that apply for Stanley Black & Decker will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, national origin, disability or protected veteran status.