Intellectual Property Paralegal

2 weeks ago

Chicago, United States Adecco Permanent Recruitment Full time

IP Paralegal


Job Summary:

As an integral part of the team, the Intellectual Property (IP) Paralegal assists the IP attorneys with all aspects of our dynamic intellectual property practice. This includes counseling, clearance, licensing, prosecution, business transactions involving intellectual property, maintenance, enforcement and litigation. The IP Practice Group represents clients in a broad range of industries including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services.

Responsibilities:

Independently manage large trademark and design patent portfolios

Identify potential new application filing recommendations and other issues

Structure and conduct preliminary U.S. and international searches

Analyzing and report preliminary search results

Coordinate U.S and international full search projects

Prepare responses to U.S. Office Actions and Information Disclosure Statements

Work with foreign counsel on all aspects of searching, filing, prosecution, maintenance, disputes, and ownership

Draft correspondence to clients including summaries of issues, recommendations, risk assessments

Prepare and record worldwide assignments and other post-transaction closing documents impacting trademarks

Assist with U.S. and international oppositions and cancellations


Knowledge, Skills and Abilities:

Minimum of 6-8 years on-the-job experience as an intellectual property paralegal, ideally in a law firm

Must be proactive with strong research and analytical skills

Highly organized with superior attention to detail

Excellent communication skills with the ability to effectively communicate with clients

Significant domestic and international experience including overall trademark and design patent portfolio management, clearance, due diligence, registration, maintenance and enforcement

Ability to independently oversee all aspects of U.S. and foreign trademark and design patent prosecution, maintenance and disputes

Ability to manage large, complex, international trademark and design patent portfolios

Ability to prepare and submit design patent applications, including all supporting documents

Ability to independently manage assigned docket dates including due date, reminders and follow-up actions in a timely manner

Ability to analyze new and existing portfolios to identify gap filing recommendations, ownership and other issues

Preliminary trademark search experience, preferably via Corsearch’s online platform

Experience coordinating international full search and trademark application filing projects, including analyzing each project, providing recommendations, corresponding with clients and foreign counsel, and analyzing and summarizing foreign associate opinions and recommendations

Must be proficient with relevant IP websites and databases including USPTO and WIPO, preferably Corsearch for searching and trademark watching, as well as experienced with vendors such as Clarivate/CompuMark, Corsearch, PageVault , Orbit, etc.

Ability to complete electronic filings in the USPTO, including the TTAB, and WIPO, and to delegate such filings as appropriate

Familiarity with TTAB rules and procedures a plus

Experience analyzing chain of title and updating IP ownership in the U.S. and internationally

Experience analyzing trademark watch notices and managing watch services

Must be able to analyze complex trademark and design patent portfolio matters

Must be able to synthesize foreign associate opinions and recommendations into client correspondence

Must be flexible and able to work collaboratively with supervising attorneys, paralegals, docketing, and other team members

Experience with trademark and patent docketing software, preferably CPI, including docket entry, searching, and preparing reports, a plus

Experience with domain name registration and management, copyrights, social media is a plus

Must be available and willing to work overtime


Working Conditions and Physical Effort:

Work is normally performed in a typical office work environment

The Firm will consider remote work options for this position

Limited physical effort required and very limited exposure to physical risk

Must be able to comply with all safety requirements when in our workplace

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