Paralegal - IP (Trademark/ Patent/ Copyright) The candidate will support the Intellectual Property Client Service Group's activities with respect to patent, trademark, copyright and IP-related litigation and prosecution docket related work. Follows the ethical requirements as set forth in the Rules of Professional Conduct of the state. Serves as a recognized Specialist in the IP area; provides guidance and advice in area of expertise under the oversight of Lawyer(s). Processes incoming filings, mail, and files and retrieves documents as needed. Assists with recording trademark and copyright registrations with U.S. Customs. Prepares, files and prosecutes domestic trademark and patent applications, including Drafting Responses to Office Actions, Statements of Use/Extensions of Time, and preparing/filing trademark assignments and Security interests. Communicates with clients in respect of ongoing activity in US and International trademark matters. Communicates with foreign associates with respect to International trademark applications and registrations/renewals. Reviewing weekly Trademark Official Gazette to identify client applications published for opposition, as well as to identify potentially conflicting applications against which action may be necessary. Prepares and files copyright applications and copyright assignments and Security interests. Drafts memoranda and correspondence dealing with Legal subject matter requiring considerable discretion and judgment, including search report letters for full trademark searches and cease and desist letters. Assists with handling issues of domain name/website infringements, including transfer of domain names. Enters internal and external patent, trademark, and copyright filings and correspondence into the docketing database, as well as prepares reports regarding same as needed by attorneys and Staff. Monitors and maintains patent, trademark, and copyright docketing database (including US and foreign patents and trademarks). Monitors the status of patents, trademarks, and copyrights as requested. Creates global and attorney docket reports on a weekly and monthly basis for IP attorneys/secretaries. Prepares/sends weekly reminder email run from docketing database for IP attorneys/secretaries. Reviews global docket daily, reminds attorneys of daily docket items not yet fulfilled and follows up until status is known. Assists attorneys with forms, reports and searches. Presents information effectively to lawyers and clients and responds to questions. Performs electronic research at the request of lawyers within the Intellectual Property Group, and drafts memoranda analyzing search results.

Two of the following are required: 4 year college degree, Paralegal Certificate and/or 2 years of previous Paralegal experience. 3+ years of patent, trademark, copyright and IP-litigation docketing experience required. Should have ability to deal professionally and communicate clearly and concisely, both verbally and in Writing, with internal and external clients on all levels. Demonstrated in-depth knowledge of patent, trademark and copyright laws and regulations required. Proficiency with Microsoft Office, including Word, Adobe Acrobat, and Excel, products is required. Proficient knowledge of how to research patent, trademark and copyright laws and regulations within the US Patent and Trademark Office and PATTSY databases and familiarity with the Trademark Manual of Examination Procedures and Manual of Patent Examining Procedures or any related databases. Knowledge of U.S. and International patent and trademark registration procedures required.


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