Intellectual Property (patent And Trademark) Paralegal

Description:

We are seeking an Intellectual Property (Patent and Trademark) Paralegal to provide legal support on a variety of tasks focused on Patent Matters, including primarily assisting attorneys with the management of foreign and domestic patent portfolios, and possibly assisting attorneys with management of Trademark Matters, including monitoring deadlines for various domestic and foreign trademark activities, handling routine activities in connection with the maintenance and protection of domestic and foreign trademarks, and communicating with clients.

Job Responsibilities

Responsibilities include, but are not limited to:

· Prepare and file U.S. and PCT patent applications and related documents using USPTO and WIPO online filing systems.

· Manage patent dockets and ensure all deadlines are tracked and met.

· Assist with preparing and filing responses to USPTO Office Actions.

· Maintain accurate records of filings, correspondence, and client information in IP document management systems (e.g., NetDocs).

· Coordinate with foreign associates on international filings and prosecution.

· Draft and revise Information Disclosure Statements (IDS), assignments, and other related legal documents.

· Perform legal research and support attorneys in patent portfolio management.

· Preparing patent status summary reports for attorneys and clients.

Responsibilities may also include, but are not limited to:

• Preparing and filing foreign and domestic trademark applications, statements of use, extensions of time, maintenance declarations, and other filings.
• Drafting communications with clients and foreign associates.
• Reviewing office actions and summarizing issues for attorneys.
• Performing Trademark Searches and drafting findings.
• Drafting filing instructions for foreign trademark applications.
• Preparing WIPO filings.
• Providing docket instructions and overseeing docket accuracy.
• Client communications, including providing accurate charts of client’s prosecution matters.
• Making preliminary evaluations regarding potential specimens showing use for submission.

Job Requirements

This position has the following requirements:

· 2-5 years of patent prosecution paralegal experience in a law firm or corporate IP department.

· Bachelor’s Degree, Paralegal Certificate and/or Equivalent Experience.

· Must possess a high level of professionalism and interpersonal skills so as to be able to work well with employees at all levels within the organization and maintain all information in the strictest of confidence. Required to use tact and diplomacy when dealing with others.

· Must have knowledge of and the ability to understand Patent and Trademark Office Rules, the patent and trademark prosecution process, and the maintenance of patents and trademarks.

· Must have experience with electronic filing tools (EFS-Web, Patent Center, ePCT).

· Must possess excellent organizational skills, attention to detail, good follow up skills, the ability to balance multiple projects, and have strong time management skills.

· Must have ability to process routine daily functions while being able to resolve sensitive issues and complex assignments utilizing above average critical thinking skills.

· Must have ability to read, write and communicate fluent English, with the ability to compose documents in an appropriate business style using correct grammar and spelling and communicate clearly using proper grammar and diction over the telephone.

· Must have ability to reason and apply common-sense understanding to situations encountered.

· Must be able to act in a supporting role for several firm patent attorneys.

· Must be able to monitor the IP docket for deadlines, and communicate and work closely with the patent attorneys to ensure all matters are handled in a timely fashion.

· Must have ability to work overtime as needed.

· Must have strong computer skills with high proficiency, e.g., in CPI Docket System, IPDAS, Word, Outlook, Excel and Access, and AppColl.