Intellectual Property Paralegal

2 weeks ago

Washington, United States TalentRemedy Full time

The Paralegal works closely with Senior Counsel, Intellectual Property, outside counsel, and its subsidiaries and affiliates’ business units concerning intellectual property portfolio maintenance, management, valuation, business strategy, prosecution, registration, and enforcement.

This position will support the clients counsel in assisting business units on assorted legal issues, including, but not limited to non-profit and corporate practice, general business, product management, endorsements, tax, privacy, FTC compliance/CAN-SPAM, and risk mitigation issues.


Key Duties:

  • Intellectual Property Support: Work with the Intellectual Property Attorney to prepare
  • Copyright and trademark filings, cease and desist letters.
  • Manage intellectual property physical assets including certificates, licenses, and marked materials.
  • Conduct trademark searches and prepare reports for Intellectual Property Attorney.
  • Manage and track the status of all issued licenses and assist in the preparations for the quarterly Intellectual Property Stakeholder Meeting.
  • Manage and maintain IP dockets and IP records and documents.
  • Review correspondence from USPTO, U.S. Copyright Office, and other governmental bodies and report on such correspondence to Intellectual Property Attorney and business units within the organization.
  • Assist with IP prosecution functions, including communicating office actions and deadlines and preparing responses to office actions.
  • Assist with tracking the organizations' IP licenses and assist with audits in connection with such licenses.
  • Assist in the financial management of intellectual property activities, including participation in invoice management for third-party IP vendors.
  • Other duties as assigned.


  • Contracts Support: Serve as backup support for the contract management system, including assigning contracts for attorney review, internal customer support, system troubleshooting, and repository management. Assist counsel with IP-related contracts, including IP licenses, as needed.
  • Litigation support: Serve as a backup for litigation support including assisting in subpoena routing and responses, creation, and editing of The Docket newsletter, Federal Election Commission and lobbying disclosure filings, and other support as assigned by the litigation attorney.
  • Other duties as assigned by business needs.


Requirements:

  • Bachelor’s degree in a related field or commensurate experience.
  • Minimum of three years’ experience as a paralegal with a law firm, in-house, or with a government agency.
  • Experience providing administrative support, working in and around databases, customer service support, and familiar with Microsoft 365 and other systems of record and working with IP systems at the USPTO and the Copyright Office
  • Preferred experience includes intellectual property, budget and/or litigation support, and contract support, including working with contract management systems.
  • Experience with project management and coordination required.
  • Ability to multitask successfully and complete competing priorities.
  • Strong customer service and the ability to work successfully within a team as well as individually.
  • Ability to maintain confidentiality and protect and safeguard proprietary information.

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