Working closely with in-house IP attorneys in the Legal Department, the IP Paralegal provides organizational and practice specific assistance to attorneys in the IP practice in managing patent and trademark prosecution matters including related research, analysis, docketing and eFiling. The individual in this position reports to Senior Patent Counsel and also supports Senior Trademark Counsel.
ESSENTIAL DUTIES
Day to Day IP Management (95%)
Manages all aspects of U.S. and foreign patent and trademark prosecution processes Proofs patent forms and documents, including, but not limited to, applications, information disclosure statements, amendments and responses to Office Actions, Notices of Allowance, and trademark registration maintenance documents
Coordinates inventor assignments and declarations
eFiles with the U.S. Patent and Trademark Office and prepares reporting letters to inventors Manages docket with significant awareness of and sensitivity to time management and filing deadlines
Manages and updates files with USPTO PAIR and TESS databases and prepares recommendations for updates as needed
Processes payment of patent Issue Fees
Coordinates national phase entry of PCT applications with outside counsel
Corresponds with foreign associates concerning all aspects of prosecution, oversees payment of foreign associates' invoices, and prepares reporting letters to client
Assists in prosecution of U.S. and foreign design patent applications (including convention deadlines for filing abroad)
Tracks chain of title in U.S. patents and trademark registrations and ability to perfect same Conducts trademark clearance searches
Obtains specimens in support of trademark portfolio
Meets internal and external deadlines, and successful time management
Assists and supports the department with general administrative duties and special projects related to IP matters as assigned
Other General Duties (5%)
• Provides assistance to other paralegals, legal secretaries and attorneys when necessary to meet department needs, and performs other duties as assigned.
LEVEL BASED COMPETENCIES:
Adaptability
Building Strategic Working Relationships
Technical/Professional Knowledge & Skills
Stress Tolerance
Planning & Organizing
Communication
Technical knowledge/skills (entry, intermediate, advanced)
Advanced knowledge of U.S. patent and trademark rules and procedure; knowledge of PCT and/or national laws of other countries
Proficiency with Public and Private PAIR and IP docketing databases.
Proficiency with Google Suite (Docs, Sheets, Forms, and Slides)
Familiarity with IP docketing platforms is required
General knowledge/skills (entry, intermediate, advanced)
Advanced organizational skills with an eye for detail
Ability to follow through tasks to completion
Self-motivated, with ability to work efficiently, either independently or in a team environment Advanced communication skills, both verbal and written
Education/Experience
Minimum five (5) years of relevant work experience in a professional environment; both law firm and in house experience preferred
College Degree required
Paralegal certificate required