IP Paralegal

Job Description:

Responsible for providing patent/trademark paralegal services to Intellectual Property partners, associates, and on an as needed basis for other staff members.

ESSENTIAL DUTIES AND RESPONSIBILITIES:

• Responsibilities in US prosecution include preparation and filing all PTO communications for patents and trademarks including, but not limited to, new applications, Office Action responses, assignments, security interests, Information Disclosure Statements, Sections 8 and 15 Declarations, Renewals and Opposition/Cancellation Proceedings.

• Responsibilities in Foreign prosecution include filing new foreign applications, attending to foreign requirements specific to each country, foreign assignments, security interests, Renewals and Opposition/Cancellation Proceedings.

• Attending to all interim communications received from the U.S. Patent and Trademark Office and foreign firms.

• Docketing of all trademark deadlines and inputting data relating to trademarks and Opposition/Cancellation Proceedings.

• Reporting all interim communication to clients from filing to issuance.

• Monitoring of all deadlines as well as convention reminders including reminders to the clients.

• Handle incoming U.S. and foreign patent and trademark-related correspondence.

• Prepare and arrange for transmittal of correspondence, legal documents etc., via fax, regular mail service, e-mail, as well as hand-delivery, Federal Express and other messenger service. Follow up to assure timely and accurate delivery.

• Assisting attorneys in preparation of trademark search reports.

• Maintain client files in an orderly fashion and in compliance with Firm procedures.

• Other projects/responsibilities as assigned.

Job Requirements:

JOB QUALIFICATIONS:

This position requires a four year degree; a minimum of 3 years of patent/trademark prosecution experience; possess excellent interpersonal, writing and speaking skills; be organized and detail oriented; be able to juggle several tasks simultaneously and to work effectively under pressure.

The ideal candidate will enjoy being a team player as well as working independently; have excellent organizational and communication skills, exhibit a positive, helpful attitude and the ability to maintain confidential information; exercise good judgment and follow through on assigned tasks. Additionally, the position requires flexibility to work overtime hours.

The Patent/Trademark Prosecution Paralegal must have knowledge of both U.S. and foreign prosecution and opposition proceedings.

The paralegal must also have a full working knowledge of PATTSY.

SKILLS:

Ability to perform the essential functions of the position within time constraints and with interruptions.

Act in accordance with the Firm’s policies and procedures.

Strong initiative and prioritization skills.

Per firm policy, hybrid work schedule – three days in the office and two days WFH.