IP Patent Docketing Paralegal

About the role

The IP Patent Docketing 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. This role requires current familiarity with trademark docketing procedures, software, and best practices.

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
• 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
• Experience with US and foreign patent and trademark laws and prosecution procedures
• Exceptional attention to detail and accuracy
• Extensive experience with USPTO, WIPO, and foreign trademark office websites
• Familiarity with industry-standard patent and trademark docketing software and web-based products
• Organizational and time-management skills
• Communication skills, both written and verbal
• Ability to work independently and as part of a team in a fast-paced environment

Skills

• Trademark docketing procedures
• US and foreign patent and trademark laws and prosecution procedures
• Attention to detail and accuracy
• Use of USPTO, WIPO, and foreign trademark office websites
• Industry-standard patent and trademark docketing software and web-based products
• Organizational and time-management skills
• Communication skills, both written and verbal
• Ability to work independently and as part of a team in a fast-paced environment

Benefits

Comprehensive benefits including: medical and dental, vision, disability and life insurance, 401K, PTO, paid holidays, gear discounts and the ability to add value to an exciting mission!

Pay

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