Intellectual Property Prosecution Paralegal

Job Title: Intellectual Property Prosecution Paralegal Location: New York City, New York Duration: Full Time/PermanentJob Description:Our client, a top Am 100 law firm, is seeking an experienced Intellectual Property Prosecution Paralegal for their offices in New Jersey or New York. The ideal candidate will have at least 5 years of experience in a law firm setting, specifically in intellectual property prosecution. Skills and Certifications [note: bold skills and certification are required]Candidates must have solid experience in all aspects of IP prosecution.A college degree and/or a paralegal certificate are required.Proficient in MS Office (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance. FamiliarityEssential Duties and Responsibilities: ● Prepare and electronically file a variety of USPTO trademark prosecution and maintenance documents, including applications, responses to office actions, and various other legal forms. ● Manage the preparation and filing of trademark documents with WIPO and under the Madrid Protocol, including international registrations and responses to irregularities. ● Liaise with foreign counsel to manage international trademark applications and registrations, including document legalization. ● Communicate regularly with clients about the status of trademarks and impending deadlines. ● Conduct preliminary trademark searches using online and USPTO resources. ● File copyright registrations and perform due diligence on IP assets for corporate transactions. ● Support litigation activities, including preparation for TTAB proceedings and UDRP actions. ● Handle all aspects of patent prosecution in the US, PCT, and foreign jurisdictions, including filing design applications and managing deadlines. ● Maintain and monitor IP deadlines using docketing software, preferably CPI, and ensure communication of deadlines to attorneys and staff. Qualifications: ● A college degree and/or a paralegal certificate are required. ● Proven organizational skills with the ability to prioritize and manage a considerable workload effectively. ● Strong team player with excellent communication skills, both written and verbal. ● Proficient in MS Office (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance. Familiarity with iManage is advantageous.

Created: 2025-03-02