Intellectual Property Prosecution Paralegal
Intellectual Property Prosecution Paralegal
Employer Active
Job Alert
You will be updated with latest job alerts via email
Share
Job Alert
You will be updated with latest job alerts via email
Not Disclosed
Salary Not Disclosed
1 Vacancy
Job Description
Intellectual Property Prosecution Paralegal
About the Job:
We are seeking an Intellectual Property Prosecution Paralegal for our New Jersey or New York Offices with 5 years of law firm intellectual property prosecution paralegal experience.
Essential Duties and Responsibilities:
- Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to applications office action responses extensions of time statements of use affidavits renewals assignments and powers of attorneys.
- Identify and prepare appropriate specimens of use for submission to the USPTO and communicate with clients regarding same.
- Prepare and file trademark documents with WIPO and through the Madrid Protocol including but not limited to applications for International Registration responses to Notices of Irregularity renewals assignments and powers of attorney.
- Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/ registrations outside of the United States including attending to notarization and legalization of documents.
- Communicate with clients regarding trademark status and upcoming deadlines as needed.
- Conduct preliminary trademark clearance searches online and USPTO website.
- Prepare and file copyright applications for registration.
- Conduct due diligence on trademark portfolios and IPrelated corporate transactions.
- Assist with preparation and filing TTAB petitions motions and other paperwork.
- Assist with investigations of thirdparty use of marks preserving evidence creating PDFs and making exhibits for briefs and other filings.
- Assist in preparation and filing of UDRP actions.
- Prepare and file or instruct on all aspects of US PCT and foreign prosecution.
- Proof and edits patent applications and office actions and prepares office actions.
- File and assist in prosecution of design applications (including convention deadlines for filing abroad).
- Review files and prepare of Information Disclosure Statements and accompanying documents.
- Assist clients with ongoing thirdparty patent monitoring.
- Ensure deadlines are calendared and reported; experience with using trademark docketing software systems preferably CPI.
- Maintain a docket of IP deadlines and coordinate and communicate deadline responses with relevant attorneys and staff.
Qualifications:
Candidates must be highly organized and possess the ability to prioritize be a team player and have excellent written and verbal skills. College degree and/or paralegal certificate required. Strong working knowledge of MSOffice (Outlook Word Excel PowerPoint) Relativity and Concordance required. Knowledge of iManage is a plus.
Employment Type
Full Time
