Intellectual Property Paralegal

1 week ago

New York, United States Lexitas Legal Talent Outsourcing Full time

Our client, a storied and marquee law firm based in Manhattan, is seeking an Intellectual Property Paralegal to join the firm's Finance Group. This is a hybrid role working out of the firm's Midtown offices.


In this role, the Paralegal will provide primary support to the firm's Global Leveraged Finance team relating to non-litigation, intellectual property-specific functions, including IP due diligence searches, ownership and lien reviews and perfection operations in support of the firm's industry leading finance practice.


Responsibilities:

  • Independently conduct IP due diligence searches (i.e., IP litigation, ownership and lien searches).
  • Analyze IP search results, identify and remedy issues, and create formal reports and schedules of findings for use in definitive deal documents, including IP Assignments, Purchase Agreements, Perfection Certificates, Security Agreements, Security Interest Releases, etc.
  • Review, revise, and confirm search results from other counsel and third-party vendors in conjunction with due diligence and preparations of definitive deal documents.
  • Prepare and file executed copyright-related documents for recordation with the U.S. Copyright Office; other communications with the USCO as needed.
  • Prepare and file patent and trademark-related documents for recordation with the U.S. Patent and Trademark Office; other communications with the USPTO as needed.
  • Report as-filed documents and received notices of recordation to deal teams.
  • Provide guidance to deal teams relating to IP collateral and perfecting security interests in the same, under attorney supervision.
  • Maintain master records of all IP-related searches, filings and recordations.
  • Maintain the Firm’s central IP prosecution docketing system and master docket.
  • Review correspondence/communications from U.S. Patent and Trademark, client, foreign associates and other sources to assess whether soft or hard deadline or other actions should be docketed.
  • Create customized programs that are automated to calculate deadlines in docketing software.
  • Instruct and manage third-party vendors handling IP-related functions, including participating in invoice management when required.


Skills required:

  • A minimum of three years of intellectual property patent prosecution and/or trademark registration experience from a leading intellectual property law firm practice.
  • Strongly prefer experience with intellectual property docketing systems (CPi, AltLegal, etc.)
  • Ability to meet deadlines and work well under pressure.
  • Meticulously detail-oriented and able to prioritize and complete multiple projects simultaneously with minimal supervision.
  • Positive, can-do approach to provide support on assigned matters and to delegating work to other team members.
  • Effective and proactive team player.
  • Ability to communicate recommendations and best-practice suggestions to Partners, Special Counsel and Associates.
  • Flexible and available to work overtime as needed (includes evening and weekend).
  • Able to appropriately handle confidential information and documents.
  • Become a notary public within the first six (6) months of employment (if not already one).
  • Strong computer skills and proficiency in Microsoft Office (Word, Excel and PowerPoint) and Adobe Acrobat.
  • Ability to work at a computer screen for a sustained amount of time.


Compensation: $70K-$100K plus OT. Please note that for candidates with exceptional experience there is some flexibility for higher levels of compensation.

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