Intellectual Property Paralegal
Considine Search - San Mateo, CA
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Paralegal-Intellectual PropertyNew York, Phoenix, San Francisco, St. Louis or Washington, DCSummaryThe Paralegal-Intellectual Property will support the Intellectual Property Client Service Group's activities with respect to trademark, patent, and copyright prosecution work.ResponsibilitiesMonitors 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 clientsAssists with recording patent, trademark and copyright assignments and security interests with the USPTO and the U.S. Copyright OfficePrepares, files and prosecutes domestic trademark applications, including drafting applicable documents and routine client reportingPrepares and files Responses to Office Actions, Statements of Use/Extensions of Time, and trademark renewal documentsPrepares and files Information Disclosure Statements for patent applicationsCommunicates with USPTO, attorneys, paralegals, liaisons, and staff about docketing and prosecution mattersCommunicates with clients in respect of ongoing activity in US and international patent and trademark mattersCommunicates with foreign associates with respect to international patent and trademark applications and registrations/renewalsReviews weekly trademark watch notices for potentially conflicting applications against which action may be necessaryReviews USPTO and outside counsel correspondence, dockets new cases and new due datesAssists with handling issues of domain name/website infringements, including transfer of domain namesProvides information and recommendations on various matters under the oversight of lawyer(s)Presents information effectively to lawyers and clients and responds to questionsTracks and records time in Intapp Time systemContributes to the overall team effort by working with all members and levels of personnel in various locations throughout the FirmFollows the ethical requirements as set forth in the Rules of Professional Conduct of the statePerforms other duties as assignedEssential Job Specifications/QualificationsTo 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 proceduresDemonstrated knowledge of U.S. and international trademark and patent docketing proceduresDemonstrated knowledge of trademark and patent docketing software.Proficiency with Microsoft Office products, and PDF ProAbility to organize large amounts of data, both hardcopy and electronic, into an easily retrievable systemDemonstrated problem solving skills and the ability to work independently in a fast-paced environmentPositive attitude, team player, pro-active and able to handle pressureAbility to pay close attention to detail and to perform a myriad of tasks on a daily basisAbility to follow up as necessary to ensure both internal and external deadlines are metAbility to be flexible, able to adapt to changing work priorities, workflow and work assignmentsAbility to work occasional extended hours with little or no noticeAbility to regularly report to work on the days and times scheduledTravelMinimal 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 certificateLI-Hybrid
Created: 2025-01-15