Intellectual Property Paralegal

About the role

The Intellectual Property Paralegal role provides essential attorney and client support relating to trademark clearance and docketing in all phases of domestic and foreign trademark prosecution, as well as high-level patent prosecution support.

Responsibilities

• Manage and maintain patent and trademark docket, ensuring accurate data entry
• Docket new patent and trademark application filings, incoming office actions, correspondence (USPTO, WIPO/Madrid, and foreign associate correspondence and deadlines), and related deadlines
• Conduct comprehensive trademark searches and clearance
• Advisory attorneys of intellectual property issues
• Prepare docket status and custom reports for clients and attorneys through database as requested
• Manage and oversee patent and trademark portfolios both domestically and internationally
• Manage audits of all patent and trademark files
• Aid with verifying the status of patent and trademark applications domestically and internationally
• General knowledge of patent databases (e.g., searches, status checks, electronic filing of patent applications and responses)
• Aid with patent and trademark file transfers (inbound and outbound)
• Prepare and file trademark applications, with attorney supervision, and process renewals with the relevant trademark offices
• Policing trademark infringement on a global basis and managing contested matters related to trademarks and domain names
• Managing online anti-counterfeiting and brand protection work

Requirements

• At least 10 years of trademark docketing experience, preferably within a law firm or professional services environment and in-house experience
• Working knowledge of US and foreign patent and trademark laws and prosecution procedures, including statutory and filing deadlines
• Solid working knowledge of trademark docketing procedures
• Exceptional attention to detail and accuracy, with the ability to manage multiple tasks simultaneously
• Extensive experience with the use of USPTO, WIPO, and foreign trademark office websites
• Demonstrated knowledge of US and foreign trademark rules and procedures
• Familiarity with industry-standard patent and trademark docketing software and web-based products (e.g., CPI, Anaqua)
• Excellent organizational and time-management skills
• Effective communication skills, both written and verbal
• Ability to work independently and as part of a team in a fast-paced environment

Qualifications

• Current familiarity with trademark docketing procedures, software, and best practices

Skills

• Strong legal research and analytical skills
• Excellent interpersonal and communication skills
• Proficiency in Microsoft Office Suite
• Experience with legal research databases

Benefits

Our benefits package includes:

• Medical and dental coverage
• Vision coverage
• Disability and life insurance
• 401(k) retirement plan
• Flexible vacation and holiday schedule
• Gear discounts
• The ability to contribute to a meaningful mission

Pay

Annual Salary: $93,000.00 - $106,000.00