ATLANTA, GA, USA
1 day ago
Intellectual Property (IP) Paralegal

About NCR VOYIX

NCR VOYIX Corporation (NYSE: VYX) is a leading global provider of digital commerce solutions for the retail, restaurant and banking industries. NCR VOYIX is headquartered in Atlanta, Georgia, with approximately 16,000 employees in 35 countries across the globe. For nearly 140 years, we have been the global leader in consumer transaction technologies, turning everyday consumer interactions into meaningful moments. Today, NCR VOYIX transforms the stores, restaurants and digital banking experiences with cloud-based, platform-led SaaS and services capabilities.

Not only are we the leader in the market segments we serve and the technology we deliver, but we create exceptional consumer experiences in partnership with the world’s leading retailers, restaurants and financial institutions. We leverage our expertise, R&D capabilities and unique platform to help navigate, simplify and run our customers’ technology systems.

Our customers are at the center of everything we do. Our mission is to enable stores, restaurants and financial institutions to exceed their goals – from customer satisfaction to revenue growth, to operational excellence, to reduced costs and profit growth. Our solutions empower our customers to succeed in today’s competitive landscape. 

Our unique perspective brings innovative, industry-leading tech to all the moving parts of business across industries. NCR VOYIX has earned the trust of businesses large and small — from the best-known brands around the world to your local favorite around the corner.

Role: Intellectual Property (IP) Paralegal

Job Description

The IP Paralegal will be a member of the NCR Voyix IP Law Group, which is responsible for, and handles, all aspects of intellectual property for NCR Voyix, including patent preparation and prosecution, and trademark review, clearance, preparation and prosecution, and alleged infringement. The IP Paralegal will work with and support a dynamic and collaborative group of IP attorneys within the IP Law Group, as well as, other attorneys in the broader NCR Voyix Law Department on an as-needed basis.  The IP Paralegal will be primarily responsible for overseeing, managing, and supporting numerous aspects of NCR Voyix’s U.S. and non-U.S. patent and trademark preparation and prosecution practices, as further detailed below. This position reports directly to the Senior IP Counsel, Head of Patents at NCR Voyix, who is responsible for all aspects of patent preparation and prosecution, and the IP paralegal will provide primary support in that area.  The IP Paralegal will also be required to provide broad-based support to the Senior IP Counsel, Head of Trademarks and Copyrights, with respect to trademark matters. Additionally, the IP Paralegal will support other members of the IP Law Group, as needed.

The IP Paralegal is expected to leverage their prior experience and knowledge to provide proactive, timely, diligent, and comprehensive support to IP attorneys and others.  The IP Paralegal is expected to have the experience, knowledge, and capability to engage in activities that will substantially lessen the burden on the IP attorneys, including i) proactively engaging with outside counsel, vendors, the business, and others, as needed, ii) anticipating, identifying, and working to remedy IP issues in order to mitigate risk and avoid negative outcomes (including making attorneys aware of the issues with sufficient advance notice to allow for corrective measures to be taken), and iii) developing outside-the-box solutions to achieve desired outcomes.

This position will provide the IP paralegal with a unique opportunity to work with world-class IP attorneys, challenge themselves, and grow and enhance their experience and skillset. In particular, the IP Paralegal will be afforded the opportunity to meaningfully contribute to and influence the direction of the IP Law Group and how it operates, including by sharing views on IP-related subject matter and providing input and feedback with respect to improvements to the IP Law Group’s practices and processes.

Key Areas of Responsibility

Serve as the primary owner of NCR Voyix’s integrated Invention Disclosure Record (IDR) and Patent and Trademark file maintenance and docketing database system (hereinafter “IP Management System”), including performing the following:Creating database records in the IP Management System corresponding to new patent and trademark filings in a timely mannerEnsuring that patent and trademark database records in the IP Management System contain accurate information at all times and are timely updated to reflect changes that occur during prosecution, including accessing and monitoring available databases (e.g., USPTO Patent Center, Google Patents, etc.) to ensure that data is accurate and coming up with strategies/solutions for system-wide data validationReviewing correspondence from the USPTO, non-U.S. patent and trademark offices, and outside counsel, and ensuring that associated due dates and action items are appropriately docketed in the IP Management System, tracked, and completed on timeTaking the lead in periodic meetings held with the vendor of the IP Management System to ensure that new features/functionality are incorporated into the system in a timely manner, including providing input/feedback to IP attorneys on new features/functionality that may be desirableGenerating a variety of reports through the IP Management System on both a periodic and ad-hoc basis, including reports relating to IDR submissions, maintenance fee and annuity payments, and docketing deadlines for NCR Voyix’s patent and trademark portfolioPeriodically updating listings of top innovators at NCR Voyix (i.e., inventors with the most original US patent applications and issued US patents over a rolling 52 week period) based on reports created through the IP Management SystemSupporting, monitoring, and updating information in the IDR Portal (which is part of the IP Management System), including updating information contained therein at the instruction of the Head of Patents and supporting inventors and other participants in the IDR review process with their use of the IDR PortalManaging and overseeing NCR Voyix’s inventor recognition and remuneration programs, including using the IP Management System to generate related reports

Develop and maintain an expert knowledge of U.S. and non-U.S. patent and trademark regulations and procedures, and prepare applications, responses, and other documents and forms for attorney review based on that knowledge, including:Preparing and assisting with filing of US and PCT patent applications Preparing patent applications and accompanying documents for filing by outside counsel in the US and/or in non-US jurisdictionsPreparing office action response shells for IP attorneysPreparing Information Disclosure Statements (IDSes) based on an in-depth knowledge of IDS timing and content regulations, including determining whether copies of cited references are required, and if so, obtaining such copies as well as any translations that are needed, determining whether a fee is due, determining whether a certification can or needs to be made, and determining whether QPIDS may be availableReviewing EP granted claims for accuracy and coordinating the process for validating the EP grant in desired jurisdictions, including obtaining translations of the granted claims and providing the translations to outside counsel along with validation instructionsMonitoring and managing US and non-US patent and trademark preparation and prosecution, including sending new patent application engagements to outside counsel at the IP attorney’s direction and following up with outside counsel to ensure that applications and responses are timely filedPerforming a thorough review of each patent application upon allowance including a review of allowed patent claims to determine whether a Rule 312 Amendment is needed and a review of the prosecution history to ensure that all outstanding items have been completed, including whether all IDSes have been submitted and considered and whether all inventor declarations and assignments have been submittedLeveraging an expert understanding of USPTO patent rules and regulations, including 1) how patent term is calculated and impacted by patent term adjustment (PTA), terminal disclaimers (TDs), or the like, and 2) Information Disclosure Statement (IDS) timing and content requirementsStaying up-to-date on U.S. and non-U.S. patent and trademark fee increases (e.g., the January 2025 USPTO fee increases) and keeping attorneys informed of impending fee increasesPreparing various forms, including Substitute Statements, Terminal Disclaimers, Petitions, etc.Preparing trademark responses, forms, and documents (e.g., specimens, statements of use, etc.)

Utilize Sharepoint and other available resources to maintain and update documents for tracking due dates/action items to ensure that due dates are not missed and unnecessary fees are not incurred, including:Supporting the patent continuation practice by periodically reviewing correspondence from the USPTO and updating internal records of allowed patent applications to ensure that all relevant information is included (e.g., issue fee payment dates, dates of issuance, election of species/restriction requirement information (if applicable), continuing application information, etc.) and providing notice to attorneys of updates and advance notice regarding impending deadlinesPeriodically updating an internal patent portfolio categorization to reflect new filings and new issuances, as well as business and technology categorizations for the new filings based on instructions received from the Head of Patents   Updating, as needed, a listing of pending IDSes to reflect current status

Develop and maintain an expert knowledge of annuity and maintenance fee requirements in the U.S. and various non-U.S. jurisdictions to ensure that annuity/maintenance fee/renewal payments are timely made to avoid loss of IP rights and that annuity/maintenance fee information and instructions to third-party payment service providers are up-to-date and accurateDevelop and maintain an expert knowledge of various deposit accounts (e.g., USPTO, EPO) used to pay patent and trademark fees, including generating account statements as needed, managing the automatic debiting procedure at the EPO, and monitoring deposit account fund levels and supporting the replenishment of deposit accounts Monitor the IP Law Group Website to ensure that the content is accurate and up-to-date and proactively informing attorneys of a need to update information on the siteDevelop and maintain an in-depth knowledge of NCR Voyix’s procedures, processes, and policies as they relate to IP

Minimum Requirements & Experience

A bachelor’s degree or paralegal certification, along with a minimum of 5 years of work experience in a law firm or an in-house legal department, specializing in patent and trademark preparation and prosecutionIn the absence of a bachelor’s degree or paralegal certification, at least 10 years of work experience in a law firm or an in-house legal department, specializing in patent and trademark preparation and prosecutionIntimate knowledge of U.S. and EPO patent and trademark procedures and regulations, especially as they relate to the areas highlighted aboveAdvanced knowledge of IP docketing and significant experience with IP database systems  Advanced knowledge of Adobe Acrobat Pro and Microsoft Office, including Outlook, Word, and ExcelExcellent oral and written communication skills, including the ability to communicate and successfully engage with stakeholdersExcellent organizational and multi-tasking skillsAbility to effectively manage projects, prioritize tasks, and work independently in a fast-paced, demanding environmentAbility to identify IP-related issues and proactively raise them and brainstorm solutions with IP attorneys and othersSelf-starter and team player who sets and looks to exceed high standards for themselvesOpen to learning and growing their IP skillset

Non-Required Preferences

Knowledge and experience with CPi and CPAKnowledge and experience with invention disclosures and associated systemsKnowledge and experience with inventor recognition/remuneration programsKnowledge and experience with domestic and foreign patent databases (e.g., USPTO Patent Public Search, EPO Register, WIPO Patentscope)Ability to perform patent term adjustment reviews

Offers of employment are conditional upon passage of screening criteria applicable to the job

EEO Statement

Integrated into our shared values is NCR Voyix’s commitment to diversity and equal employment opportunity.  All qualified applicants will receive consideration for employment without regard to sex, age, race, color, creed, religion, national origin, disability, sexual orientation, gender identity, veteran status, military service, genetic information, or any other characteristic or conduct protected by law.  NCR Voyix is committed to being a globally inclusive company where all people are treated fairly, recognized for their individuality, promoted based on performance and encouraged to strive to reach their full potential.  We believe in understanding and respecting differences among all people.  Every individual at NCR Voyix has an ongoing responsibility to respect and support a globally diverse environment.

Statement to Third Party Agencies
To ALL recruitment agencies: NCR Voyix only accepts resumes from agencies on the preferred supplier list. Please do not forward resumes to our applicant tracking system, NCR Voyix employees, or any NCR Voyix facility. NCR Voyix is not responsible for any fees or charges associated with unsolicited resumes

“When applying for a job, please make sure to only open emails that you will receive during your application process that come from a @ncrvoyix.com email domain.”

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