Intellectual Property Prosecution Paralegal - Top Tier Reps LLC

Intellectual Property Prosecution Paralegal – New Jersey (Hackensack) or New York Office

Our client is seeking an Intellectual Property Prosecution Paralegal with 5 years of experience in law firm intellectual property prosecution to join their New Jersey or New York office.

Key Responsibilities

• Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO, including applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorney.
• Identify and prepare specimens of use for submission to the USPTO and communicate with clients regarding requirements.
• Prepare and file trademark documents with WIPO and through the Madrid Protocol, including applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.
• Collaborate with foreign counsel for the prosecution and maintenance of trademark applications/registrations outside the U.S., including notarization and legalization of documents.
• Communicate with clients about trademark status and upcoming deadlines.
• Conduct preliminary trademark clearance searches using online resources and the USPTO website.
• Prepare and file copyright applications for registration.
• Conduct due diligence on trademark portfolios and assist with IP-related corporate transactions.
• Assist with the preparation and filing of TTAB petitions, motions, and related paperwork.
• Support investigations into third-party use of marks, preserving evidence, and creating exhibits for briefs and filings.
• Assist in the preparation and filing of UDRP actions.
• Assist with all aspects of U.S., PCT, and foreign prosecution filings.
• Proofread and edit patent applications and office actions, and prepare office actions.
• File and assist in the prosecution of design applications, including managing convention deadlines for foreign filings.
• Review files and prepare Information Disclosure Statements and accompanying documents.
• Assist clients with ongoing third-party patent monitoring.
• Ensure deadlines are properly calendared and reported, utilizing trademark docketing software systems (preferably CPI).
• Maintain an IP deadline docket and coordinate responses with relevant attorneys and staff.

Qualifications

• Education: College degree and/or paralegal certificate required.
• Experience: Minimum of 5 years of experience in intellectual property prosecution.
• Strong organizational skills, attention to detail, and the ability to prioritize tasks effectively.
• Ability to work collaboratively in a team environment.
• Excellent written and verbal communication skills.
• Proficiency with MS Office Suite (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance.
• Knowledge of iManage is a plus.
• Strong knowledge of trademark docketing software systems (preferably CPI).
• Ability to manage and prioritize multiple deadlines efficiently.

Compensation and Benefits

• Salary Range: $76,500 to $179,000, based on experience.
• Competitive starting salary with a comprehensive benefits package.

This position offers a great opportunity to work with a dynamic intellectual property team on a variety of exciting and complex cases.

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