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Manager, Paralegal

Company: Tivo
Location: San Jose
Posted on: June 12, 2021

Job Description:

Xperi invents, develops and delivers technologies that enable extraordinary experiences. We make entertainment more entertaining, and smart devices smarter.

From the home to the car to everywhere in between, managing content and connections in a way that is smart, immersive, and personal is precisely what Xperi's technologies do.

Our inventions are foundational to the global entertainment ecosystem and our products and data improve every aspect of the digital entertainment experience, from choice to consumption.

Content markets are changing, fast. Consumers face a simultaneously expanding and fragmenting set of choices. Xperi technology cuts through the chaos, putting us at the forefront of fast-moving trends in streaming, digital entertainment, and AI applications - in any environment.

Xperi is at the heart of extraordinary experiences.

We can't wait to show you what's next.

Manager, Paralegal

Position Overview:

Xperi is seeking an experienced Patent Paralegal to contribute to the success of its Intellectual Property (IP) & Licensing Department. The ideal candidate will be an experienced patent portfolio administration professional capable of handling all administrative tasks involved in the management of high technology patent portfolios leveraged by a sophisticated IP business. The candidate must be comfortable working with inventors, in house and outside lawyers and business executives. Experience should include supporting attorneys and patent agents in all facets of patent filing and prosecution in the USPTO and foreign patent offices including filing of patent forms and formal documents, use of advanced patent management software tools (especially IP Folio) and budget management software (especially Simple Legal) including receipt and docketing of documents from various patent offices, management reporting reconciliation of the patent budget, working with in house counsel on the payment and administration of patent maintenance fees through patent annuity service providers. Experience with domestic and international electronic patent filing. Keeping current with all pertinent rules and fees associated with patent filing and prosecution. Generate reports and gather data for patent portfolio dashboards and other ad-hoc inquiries regarding the patent portfolio. Maintain and manage patent office deposit accounts.

Responsibilities:

  • Set up and assign docket reminders and create tasks directly from USPTO to back end of docketing database, train staff
  • Prepare patent applications, forms and responses, and file with USPTO/IB - using private PAIR and e-PCT
  • Open and set up new matters in IP Folio according to established Xperi procedures
  • Docketing, manage docket review meetings with attorneys and engineers/inventors; assign work to law firms
  • Prepare and track Information Disclosure Statements
  • Assist inventors with proper methods for completing Invention Disclosures
  • Due diligence/research, prepare intake re prospective acquisitions (PPA exhibit)
  • Manage acquisitions and integration of patent assets
  • Patent research; generate various reports for team and management
  • Annuity/maintenance review and instruction
  • Develop and administer team processes and procedures
  • Manage back-end of IP Folio (auto-tasks, users, etc.), management of the software
  • Manage SimpleLegal regarding outside counsel billings/law firm entry and matter matching issues
  • Coordinate annuities/maintenance with IPAN/CPA annuity provider
  • Manage USPTO deposit account, with monthly report to Finance, and replenishment

Qualifications:

  • At least seven years of patent paralegal experience including patent docketing experience
  • At least 5 years of docketing experience with emphasis on US patent prosecution
  • Proficiency with Microsoft Word, PowerPoint, Excel, Adobe Acrobat, Smartsheets
  • Proficiency with docketing databases, especially IP Folio
  • Strong verbal and written communication skills
  • Attention to detail, ability to proofread and identify errors in printed documents
  • Experience with establishing an in-house filing process would be a bonus

Benefits & Perks

Our employees and their families are important to us and our comprehensive pay, stocks and benefits programs reflect that. Xperi supports personal well-being, builds financial security, and enables employees to share in the success of Xperi.

Xperi is an Equal Employment Opportunity Employer

Keywords: Tivo, San Jose , Manager, Paralegal, Other , San Jose, California

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