Patent Paralegal

2 weeks ago

Washington, United States Personnel Management Solutions, Inc. Full time
Job DescriptionJob Description

Our people are the driving force behind our success. Because we value the role every individual plays in how we deliver exceptional legal services, we hire people who will contribute to our professional reputation, enhance client relationships and share in our success.

 

The Firms offices serves clients throughout the Michigan, Chicago, Washington DC and Dallas-Fort Worth metroplex, nationally and internationally. Our office includes a large group of the firm's intellectual property and patent professionals, along with corporate, security, and technology law professionals. Our team members handle complex patent trial matters, including inter partes review proceedings before the U.S. Patent and Trademark Office, and many of our attorneys are nationally recognized in this area of law. Our Dallas-North lawyers also counsel clients in patent strategy, patent prosecution and portfolio management, licensing, and litigation. Our lawyers are recognized in publications such as the 2021 edition of The Best Lawyers in America (Woodward/White, Inc.) We are committed to having a diverse workforce that reflects our communities, and we seek highly motivated lawyers and staff who value our culture of respect and teamwork. 

 

The Firm is listed among the fastest-growing law firms in the Am Law 100, is looking for an experienced and motivated individual to support the Trademark and Advertising practice group by assisting with U.S. and foreign trademark prosecution (e.g. requesting filing instructions, gathering specimens from the client, filing required documents through the United States Patent and Trademark Office (USPTO), corresponding with foreign counsel), managing trademark dockets, handling document management, and conducting legal research.

 

Since the firm’s founding, we have understood and appreciated that our people are the driving force behind our success. We value the unique role every individual plays in how we deliver exceptional legal services. As a result, we hire people who will reinforce and contribute to our professional reputation, enhance client relationships, and share in our success. We are committed to having a diverse workforce that reflects our communities, and we seek initiative-taking lawyers and staff who value our culture of respect and teamwork.

 

Essential Duties

  • Assist team with prosecution of U.S. and foreign trademarks supporting attorneys electronically across offices in different states and time zones.
  • Oversee all aspects of trademark applications, including transmittal of filings to the USPTO via e-filing (TEAS).
  • Assist with preliminary trademark searches as requested.
  • Address foreign filings, including sending instructions to foreign counsel, complying with formal requirements, and any necessary follow up.
  • Maintain trademark docket from application filing through registration, meeting with attorneys for docket reviews/upcoming deadline coverage and strategy for completion.
  • Provide support for domestic and foreign infringement matters, as requested, such as assembling evidentiary material and creating and maintaining tracking reports.
  • Draft assignment documents for recordation and meeting country specific requirements, such as notarization and legalization of documents.
  • Utilize, search, and research information through the USPTO, WIPO websites, and other trademark online resources.
  • Prepare/transmit reporting letters to clients regarding correspondence from USPTO and foreign counsel.
  • Following up with clients regarding dates of first use, specimens, renewals, and post-issue requirements such as Statement of Use, Section 8 & 15, etc.

 

Qualifications

 

Knowledge/Experience

  • The ideal candidate should have 3+ years of experience as a trademark paralegal.
  • Knowledge of USPTO procedures within TMEP, and CFR, as well as foreign trademark prosecution procedures.
  • Experience in conducting trademark clearance searches and in U.S. and foreign jurisdictions.
  • Proficiency in computerized docketing systems.
  • Proficiency with all MS Office applications.

 

Skills

  • Proficiency with PATTSY, IP Master, or similar docketing systems.
  • Strong skills with Microsoft Word, Excel, and PowerPoint.
  • Experience with CT Corsearch and/or Saegis preferred.
  • Must be able to translate difficult concepts into simple terms.
  • Ability to work under tight deadlines and with a variety of work styles.
  • Must be able to work with minimal direction with the ability to multitask.
  • Must possess excellent verbal and written communication skills, strong analytical skills, and attention to detail.

 

Education

Paralegal certification from an ABA approved school or bachelor’s degree in a field related to law, administration, or liberal arts required. 

Company DescriptionSince the early 1990s, Personnel Management Solutions, Inc.'s recruiting specialists have been a valuable resource to many different companies in various industries throughout the Midwest and Florida. Although much of our expertise is within law firms and the law departments of major corporations, as well as having a strong presence within the medical field, we have also served accounting and architectural firms, automotive and manufacturing companies, non-profit organizations, property management, and many other industries.Company DescriptionSince the early 1990s, Personnel Management Solutions, Inc.'s recruiting specialists have been a valuable resource to many different companies in various industries throughout the Midwest and Florida. Although much of our expertise is within law firms and the law departments of major corporations, as well as having a strong presence within the medical field, we have also served accounting and architectural firms, automotive and manufacturing companies, non-profit organizations, property management, and many other industries.

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