IP PARALEGAL

Our client, a prestigious  law firm in mid-town NYC is looking for an IP Paralegal to assist attorneys and paralegals in U.S. and Foreign Trademark and Patent prosecution and counseling. Duties may include performing and pre-screening trademark/patent searches, assisting in preparation and filing of U.S. trademark and patent applications, amendments, responses, statements of use, extensions, affidavits and renewal applications. Position entails assisting with the prosecution and management of global patent or trademark portfolios for clients, including handling certain aspects of U.S. and foreign prosecution and maintenance and corresponding with foreign associates. Position also requires performing due diligence searches and lien researches for patent, trademark and copyright matters. Maintain positive contact with clients and observe confidentiality of client matters. Keep accurate time records.

DUTIES AND RESPONSIBILITIES:

-Responsible for maintaining patent and trademark prosecution files

-Responsible for monitoring pending deadlines and assigned projects in connection with prosecution or transactional matters

-Conduct database and internet research and work with various computer applications such as PATTSY and USPTO and third-party vendors such as Corsearch and Saegis

-Responsible for Patent and Trademark Office ("PTO") prosecution filings, and making electronic and paper filings with the PTO, correspondence with foreign trademark counsel, and legalization of documents for foreign jurisdictions

-Significant client contact and responsibility for client correspondence

-Conduct patent, trademark and copyright due diligence and other tasks related to mergers, acquisitions, trademark licensing and other transactional matters

-Assist with the filing of Security Agreements, releases and other assignments with the USPTO and Copyright Office

-Proofread, quality check and perform filings to the USPTO office and for foreign filings

-Communicate with clients, government agencies or officials, consultants and various other parties on a regular basis to collect and assemble information. Communicate findings to attorneys

-Record daily time entries in accordance with the policies and procedures of the Firm

BASIC QUALIFICATIONS

Bachelor's Degree required

3+ years’ of trademark/patent experience in a professional environment required

COMPETENCIES:

• Knowledge of Microsoft Office Suite applications, PATTSY or similar docketing systems, USPTO
• Knowledge of patent/trademark recordation and prosecution, a plus
• Ability to proofread typed material for contextual, grammatical, typographical or spelling errors
• Interpersonal skills necessary in order to communicate in person, by e-mail and telephone and follow the instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact
• Work occasionally requires a high level of mental effort and strain while organizing and maintaining multiple cases
• Ability to retrieve and distribute print volumes, push and pull packages and books weighing up to 20 pounds, and ability to retrieve and replace objects from shelves of up to 8 feet high
• Work occasionally, and with little notice, may require more than 35 hours per week to perform the essential duties of the position; may also require irregular hours
• Ability to travel to private and public buildings, locally and nationwide, via private or public conveyance to assist attorney in attending to client needs on legal matters