Intellectual Property Paralegal

Summary

Researches law, investigates facts, and prepares documents to assist the Intellectual Property department by performing the following duties:

Essential Duties and Responsibilities include the following. Other duties may be assigned.

• Prepare, format and file domestic, patent and trademark applications and related prosecution documents (including Assignments, Declarations, Powers of Attorney, IDS’s, Responses to Office Actions and, Issue Fee Transmittals, Terminal Disclaimers)

• Coordinate patent and trademark filings outside the U.S.

• Review and process incoming correspondence from outside counsel, foreign associates, USPTO and WIPO 

• Monitor prosecution of non-U.S. patent application s and identify prior art for citation in the counterpart U.S. patent application

• Prepare prior art identification and citation (including the preparation of information disclosure statements)

• Track and perfect chain of title in U.S. Patents and Trademarks

• Prepare status reports for individual client portfolios

• Maintain an up-to-date knowledge of IP rules and procedures

• Excellent interpersonal, organizational and communication skills and ability to communicate clearly, both written and verbal

• Strong attention to detail with the ability to manage multiple tasks simultaneously

• Sound judgment and ability to respect, protect and maintain highly confidential and sensitive information

• Obtain authentication documents (i.e., certified copies) as necessary for filing

• Arranging necessary translations

• Proficient with IP docketing systems and IP search platforms as well as utilize internet-based research sources such as WIPO, Espace, U.S. Copyright Office

• Experience with Computer Packages, Inc. (CPI) and Corsearch a plus but not required

• Litigation experience a plus but not required

Qualifications

To perform this job successfully, an individual must be able to perform each essential duty . The requirements listed below are representative of the knowledge, skill, and/or ability required. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Education and/or Experience

• Bachelor's degree.
• State-approved accredited paralegal certification.

·       IP experience

·       Detail-oriented and organized

·       Efficiently prioritizes their work

·       Maintains effective communication with colleagues 

·       Proficient with technology and Internet research tools

·       Knows when to be self-directed and when to ask for direction

·       Works both independently and as part a team

·       Dependable and reliable