Intellectual Property Prosecution Paralegal (Full-Time) ( Hybrid in NY or NJ) - Career Developers

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Intellectual Property Prosecution Paralegal (Full-Time) ( Hybrid in NY or NJ)
Location: Open to Hybrid in either the NJ or NYC offices
Salary: $125K - $150K Base Salary

Must Haves:

• Must be able to work Hybrid in either NJ or NYC offices
• Must have experience working as an Intellectual Property Prosecution Paralegal in a Law Firm
• 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.
• 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 concerning 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.

My client is seeking an intellectual property prosecution paralegal with 5+ years of experience in law firm intellectual property prosecution for the New Jersey or New York offices.

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.
• 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 concerning 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 on the USPTO website.
• Prepare and file copyright applications for registration.
• Conduct due diligence on trademark portfolios and IP-related corporate transactions.
• Assist with preparing and filing TTAB petitions, motions, and other paperwork.
• Assist with investigations of third-party use of marks, preserve evidence, create PDFs, and make exhibits for briefs and other filings.
• Assist in the preparation and filing of UDRP actions.
• Prepare and file, or instruct, all aspects of US, PCT, and foreign prosecution.
• Proof and edit patent applications and office actions and prepare office actions.
• Filed and assisted in prosecuting design applications (including convention deadlines for filing abroad).
• Review files and prepare Information Disclosure Statements and accompanying documents.
• Assist clients with ongoing third-party patent monitoring.
• Ensure deadlines are calendared and reported; experience 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.
• A college degree and/or paralegal certificate are required.
• Strong working knowledge of MS Office (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance required. Knowledge of iManage is a plus.