Intellectual Property Paralegal - Considine Search

Paralegal-Intellectual Property

New York, Phoenix, San Francisco, St. Louis or Washington, DC

Summary

The Paralegal-Intellectual Property will support the Intellectual Property Client Service Group’s activities with respect to trademark, patent, and copyright prosecution work.

Responsibilities

Monitors and maintains U.S. and foreign trademark and patent docketing database, PATTSY WAVE, as well as responsibility for internal docketing, and generating reports and reminders for firm attorneys and firm clients

Assists with recording patent, trademark and copyright assignments and security interests with the USPTO and the U.S. Copyright Office

Prepares, files and prosecutes domestic trademark applications, including drafting applicable documents and routine client reporting

Prepares and files Responses to Office Actions, Statements of Use/Extensions of Time, and trademark renewal documents

Prepares and files Information Disclosure Statements for patent applications

Communicates with USPTO, attorneys, paralegals, liaisons, and staff about docketing and prosecution matters

Communicates with clients in respect of ongoing activity in US and international patent and trademark matters

Communicates with foreign associates with respect to international patent and trademark applications and registrations/renewals

Reviews weekly trademark watch notices for potentially conflicting applications against which action may be necessary

Reviews USPTO and outside counsel correspondence, dockets new cases and new due dates

Assists with handling issues of domain name/website infringements, including transfer of domain names

Provides information and recommendations on various matters under the oversight of lawyer(s)

Presents information effectively to lawyers and clients and responds to questions

Tracks and records time in Intapp Time system

Contributes to the overall team effort by working with all members and levels of personnel in various locations throughout the Firm

Follows the ethical requirements as set forth in the Rules of Professional Conduct of the state

Performs other duties as assigned

Essential Job Specifications/Qualifications

To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the knowledge, skill, and/or ability required.

Demonstrated knowledge of U.S. and international trademark and patent prosecution and registration procedures

Demonstrated knowledge of U.S. and international trademark and patent docketing procedures

Demonstrated knowledge of trademark and patent docketing software.

Proficiency with Microsoft Office products, and PDF Pro

Ability to organize large amounts of data, both hardcopy and electronic, into an easily retrievable system

Demonstrated problem solving skills and the ability to work independently in a fast-paced environment

Positive attitude, team player, pro-active and able to handle pressure

Ability to pay close attention to detail and to perform a myriad of tasks on a daily basis

Ability to follow up as necessary to ensure both internal and external deadlines are met

Ability to be flexible, able to adapt to changing work priorities, workflow and work assignments

Ability to work occasional extended hours with little or no notice

Ability to regularly report to work on the days and times scheduled

Travel

Minimal travel may be necessary for this position.

Education/Experience/Certifications

• Minimum of five (5) years of intellectual property prosecution experience

• BA/BS degree and/or Paralegal certificate

LI-Hybrid