Intellectual Property Paralegal

Our Corporate, Technology, Real Estate, Intellectual Property and Charities divisions handle sophisticated and ground-breaking work in mergers and acquisitions, brands, intellectual property, hotels, investment funds, sponsorship, and partnerships. As a leader in advising successful individuals and organizations globally, we understand the unique issues surrounding private capital, including investment, structuring, cross-border transactions, and corporate and personal tax matters.

About the role

This role sits in our Los Angeles office. Our Intellectual Property Paralegal position involves preparing or assisting with trademark, patent, and copyright applications and office action responses, supporting intellectual property litigation, and conducting related research. The role requires general knowledge of USPTO rules for filing and prosecuting trademark and patent applications, as well as familiarity with foreign patent and trademark prosecution via the Patent Cooperation Treaty (PCT) and Madrid Protocol. Knowledge of TTAB and PTAB proceedings is also required.

Responsibilities

• Patents - U.S.
  • Work with attorneys to prepare and file applications and office action responses with the USPTO, including electronic filing of all USPTO documents.
  • Ensure timely responses to Office Actions, payment of issue fees, and submission of formal drawings.
  • Monitor and docket deadlines for pending patent applications and granted patents.
  • Prepare and file Information Disclosure Statements.
  • Monitor status and collaborate with attorneys and clients regarding foreign filing opportunities, including PCT and other foreign applications.
  • Report information to clients regarding USPTO communications and the status of pending patent applications and granted patents.
  • Execute U.S. and international searches.
  • Review granted patent documents to determine maintenance requirements and calculate terms.
• Patents – Patent Cooperation Treaty (PCT)
  • File all applications, drawings, and documents electronically, ensuring compliance with PCT formatting requirements.
  • Prepare request forms, select the desired International Search Authority, and verify correct applicant, inventor, and priority information.
  • Monitor the PCT timeline, including ensuring the timely filing of Demand and national/regional entry.
  • Work with attorneys and clients to evaluate findings in International Preliminary Examination Reports and select countries for national (regional) entry.
  • Assist with International Search Reports, including evaluating cited art, strategizing for Article 19 and/or Article 34 amendments, and ensuring cited art is disclosed in corresponding national cases.
  • Review and maintain a docket for timely reporting of communications to clients and foreign associates.
  • Keep attorneys apprised of upcoming deadlines and coordinate with them to update clients.
  • Assist with preparing cost estimates related to the selection of countries for national (regional) entry.
• Trademarks – U.S.
  • Execute availability and preliminary screening searches on trademark databases, including international databases.
  • Conduct online searches for potentially conflicting domain names or other internet usage.
  • Work with attorneys and clients to determine the correct mark, including design images and proper classification of goods or services.
  • Assist with preparing and filing trademark/service mark applications, either use-based or intent-to-use, via electronic filing.
  • Monitor status and collaborate with attorneys and clients regarding possible priority-based foreign applications.
  • Review office actions issued by the USPTO and assist with preparing draft responses.
  • Determine the acceptability of specimens evidencing use and assist with preparing and filing Amendments to Allege Use or Statements of Use.
  • Review Certificates of Registration for accuracy and determine dates for evidence of continued use, incontestability, and renewal.
  • Assist with preparing and filing Section 8 and 15 Affidavits and Renewal Applications.
  • Assist with preparing and filing Trademark and/or Trade Name Registration forms (State).
  • Prepare status reports.
  • Review and maintain a docket for timely reporting of communications to clients and foreign associates.
  • Keep attorneys apprised of upcoming deadlines and coordinate with them to update clients.
• Foreign Patents and Trademarks
  • Assist with preparing correspondence to foreign associates, ensuring transmission of all required documents.
  • Work with foreign associates to comply with local filing formalities, including legalization of documents if necessary.
  • Monitor status to ensure timely filing of requests for examination and payment of requisite maintenance fees in patent cases.
  • Review granted patent documents to determine maintenance requirements and calculate term.
  • Work with attorneys and clients regarding the validation procedure after the grant of European patents.
  • Work with attorneys upon receipt of office actions issued by foreign offices to ensure proper instructions and timely responses in both patent and trademark cases.
  • Review Certificates of Registration to determine renewal dates and use requirements in trademark cases.
• Copyright
  • Work with attorneys and clients to determine the type of copyright work, correct authorship, and copyright claimant.
  • Complete electronic copyright registration forms, including Requests for Special Handling if appropriate.

This list of duties and responsibilities is not exhaustive. The role may include additional tasks as required.

Requirements

• Familiarity with legal terminology pertinent to intellectual property.
• Ability to prioritize and multitask effectively.
• Ability to work both as part of a team and independently.
• Previous experience with intellectual property matters and knowledge of USPTO rules and procedures.
• A minimum of five years of experience as an Intellectual Property Paralegal.
• Strong technical skills and proficiency in Microsoft Word, Excel, Outlook, PowerPoint, and programs like FileSite/iManage and Elite.
• Strong communication skills, both oral and written.
• Interpersonal skills to establish effective working relationships with colleagues.

Qualifications

• Bachelor’s Degree strongly preferred.
• Paralegal Certificate from an ABA-approved program required.

Pay

For California, the expected salary range for this position is between $115,000 and $140,000. The actual compensation will be determined based on experience and other factors permitted by law.

About Withers

Withers is a law firm focused on people and collaboration. For over 125 years, we have supported remarkable individuals and organizations at defining moments in their lives. As the only international law firm specializing in successful individuals and private capital, we work closely with founders, investors, and family offices. We also advise governments, charities, global brands, and start-ups. Many of our clients are shaping the future and creating solutions to global challenges.

Our role is to understand each client’s unique needs and help them achieve their goals, whether building a business, buying a home, or protecting their interests. We are collaborative, working across teams and time zones, and agile, focusing on strategy rather than rigid hierarchy. Initiative, big ideas, and bold moves are always encouraged. We are Mansfield Certification Plus certified in the U.S. and UK for our efforts in recruitment and leadership progression, championing diversity within our organization and the wider legal sector.