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Intellectual Property Paralegal
New York, NY 10166 US
Job Description
The Intellectual Property Paralegal will be responsible for supporting Intellectual Property attorneys in the transactional department, and will report to the Manager of Paralegal Services
Responsibilities include:
- Conduct IP due diligence, including trademarks, patents, copyrights, and domain names.
- Manage and oversee U.S. and international trademark portfolios.
- Conduct and analyze trademark availability searches and draft summary of results.
- Research and prepare cost estimates for filing domestic and foreign trademark applications and renewals.
- Prepare and file U.S. trademark applications, responses to office actions, requests for extensions of time, statements of use, declarations of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
- Assist with the preparation and filing of TTAB proceedings.
- Draft trademark assignments, and record ownership transfers and updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates.
- Draft and file international applications, irregularity responses, subsequent designations, and WIPO renewals.
- Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution/enforcement.
- Prepare and file state trademark applications and renewals and record ownership transfer and security agreements.
- Draft and file copyright applications and record ownership transfer and security agreements.
- Review, summarize, and correspond with clients reporting notices received from foreign associates, USPTO, WIPO, TTAB, and the Copyright Office.
- Review, monitor, and maintain docket, including de-docketing actions in CPI.
- Oversee legalization of documents.
- Analyze and report watch notices.
- Coordinate and manage intake of newly acquired trademark portfolios.
- Maintain client portfolio status reports.
- Assist with special projects, including adverse matters, demand letters, customs recordation, and UDRP actions.
- Maintain and update files in iManage and electronic file storage.
- Additional tasks and responsibilities as assigned or required.
- Superior analytical and reasoning abilities.
- Must possess strong interpersonal, written, and verbal communication skills.
- Excellent organizational skills and a strong attention to detail.
- Proactive and able to handle efficiently multiple projects and client matters simultaneously.
- Ability to work independently, and as part of a team, with members across multiple offices in a fast-paced environment.
- Flexible and able to multi-task, balancing priorities and tight deadlines.
- Willingness to work overtime as needed.
- University degree
- Minimum of 3+ years of relevant Paralegal experience with some Litigation support required.
- Proficient with Microsoft Word, Excel, required and proficient with CPI (or similar docket platform), Westlaw, CompuMark/Saegis, and Orbit Intelligence preferred.
Meet Your Recruiter
Ashley Dineen
Ashley Dineen has been with The Panther Group since 2009 and has worked within many areas of the company including payroll, compliance, on-boarding, recruitment, and client management.
Ashley is a mother of two and enjoys spending time with family in her spare time.
