Paralegal – Intellectual Property

POSITION OVERVIEW

The Paralegal – Intellectual Property will support the Intellectual Property Client Service Group’s activities with respect to trademark prosecution work.

RESPONSIBILITIES

  • Monitors and maintains U.S. and foreign trademark docketing database, Pattsy, as well as responsibility for internal docketing, and generating reports and reminders for firm attorneys and firm clients.
  • Assists with recording trademark assignments and security interests with the USPTO and the Library of Congress.
  • Prepares, files and prosecutes domestic trademark applications, including drafting applicable documents.
  • Prepares responses to Office Actions, Statements of Use/Extensions of Time, and preparing/filing trademark renewal documents.
  • Communicates with USPTO, attorneys, paralegals, liaisons, and staff about docketing and prosecution matters.
  • Communicates with clients in respect of ongoing activity in US and international trademark matters.
  • Communicates with foreign associates with respect to international trademark applications and registrations/renewals.
  • Reviews weekly Trademark Official Gazette to identify client applications published for opposition, as well as to identify potentially conflicting applications against which action may be necessary.
  • Reviews USPTO and outside counsel correspondence, dockets new cases and new due dates.
  • Assists with handling issues of domain name/website infringements, including transfer of domain names.
  • Provides information and recommendations on various matters under the oversight of lawyer(s).
  • Presents information effectively to lawyers and clients and responds to questions.
  • Tracks and records time in DTE system.
  • Contributes to the overall team effort by working with all members and levels of personnel in various locations throughout the Firm.
  • Follows the ethical requirements as set forth in the Rules of Professional Conduct of the state.

ESSENTIAL JOB SPECIFICATIONS/QUALIFICATIONS

To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the knowledge, skill, and/or ability required.

  • Demonstrated knowledge of trademark docketing using Pattsy.
  • Demonstrated knowledge of U.S. and international trademark prosecution and registration procedures.
  • Proficiency with Microsoft Office products, and PDF Pro.
  • Ability to organize large amounts of data, both hardcopy and electronic, into an easily retrievable system.
  • Demonstrated problem solving skills and the ability to work independently in a fast paced environment.
  • Positive attitude, team player, pro-active and able to handle pressure.
  • Ability to pay close attention to detail and to perform a myriad of tasks on a daily basis.
  • Ability to follow up as necessary to ensure both internal and external deadlines are met.
  • Ability to be flexible, able to adapt to changing work priorities, work flow and work assignments.
  • Ability to work occasional extended hours with little or no notice.
  • Ability to regularly report to work on the days and times scheduled.

COMPETENCIES

  • Attention to detail
  • Verbal and written communication skills
  • Computer skills
  • Track, communicate, and meet deadlines

SUPERVISORY RESPONSIBILITY

This position has no direct supervisory responsibilities.

WORK ENVIRONMENT

This position operates in a professional office environment.

PHYSICAL DEMANDS

Ability to work in a typical office environment and lift up to 25 lbs.

NOTE: Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

TRAVEL

Ability to travel locally.

EDUCATION/EXPERIENCE/CERTIFICATIONS

  • Minimum of 2 years of trademark prosecution experience.
  • BA/BS degree or equivalent or Paralegal certificate.

Disclaimer:

The above statements are intended to describe the general nature and level of work being performed by the incumbent in the position. They are not intended to be an exhaustive list of all responsibilities, duties and skills of the employee. Duties and responsibilities may change at any time with or without notice.

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