Browse
···
Log in / Register

Intellectual Property Prosecution paralegal

Negotiable Salary

Fawkes IDM

New York, NY, USA

Favourites
Share

Description

Responsibilities: Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorneys. • Identify and prepare appropriate specimens of use for submission to the USPTO, and communicate with clients regarding same. • Prepare and file trademark documents with WIPO and through the Madrid Protocol, including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney. • Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/ registrations outside of the United States, including attending to notarization and legalization of documents. • Communicate with clients regarding trademark status and upcoming deadlines as needed. • Conduct preliminary trademark clearance searches online and USPTO website. • Prepare and file copyright applications for registration. • Conduct due diligence on trademark portfolios and IP-related corporate transactions. • Assist with preparation and filing TTAB petitions, motions, and other paperwork. • Assist with investigations of third-party use of marks, preserving evidence, creating PDFs and making exhibits for briefs and other filings. • Assist in preparation and filing of UDRP actions. • Prepare and file, or instruct, on all aspects of US, PCT, and foreign prosecution. • Proof and edits patent applications and office actions and prepares office actions. • File and assist in prosecution of design applications (including convention deadlines for filing abroad). • Review files and prepare of Information Disclosure Statements and accompanying documents. • Assist clients with ongoing third-party patent monitoring. • Ensure deadlines are calendared and reported; experience with using trademark docketing software systems, preferably CPI. • Maintain a docket of IP deadlines and coordinate and communicate deadline responses with relevant attorneys and staff. Requirements 5+ years of IP Prosecution experience College degree and/or paralegal certificate required.  Strong working knowledge of MSOffice (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance required.  Knowledge of iManage a plus. 

Source:  workable View original post

Location
New York, NY, USA
Show map

workable

You may also like

Craigslist
Practice Group Assistant (Seattle)
The Practice Group Assistant position fulfills many of our administrative and legal support needs. Regular hours for this position are 8:30 am to 5:00 pm Monday through Friday with a one-hour lunch break. After successful completion of a 90-day on-site orientation period, this position is eligible for a 3 day in-office/2 day work-from-home hybrid schedule. Our comprehensive benefits package includes paid holidays, health/vision/dental insurance, Employee Assistant Program (EAP), ORCA card for transportation, and generous retirement account contributions. Position Purpose: The primary purpose of this position is to provide administrative and clerical support to Legal Assistants by way of creating case files in our case management software and saving files to appropriate locations in our document management system and other projects (as assigned). This position reports to the Director of Operations, is part of the Back-Office team, and will receive the majority of their work from Legal Assistants directly. Essential Functions and Basic Duties - Create new case files in legal case management software (LawBase) for new residential eviction matters and add bring-ups (reminders) for hearing dates and other critical deadlines as requested - Save email attachments (incorporating provided exhibits when necessary) to appropriate workspace in document management system (NetDocuments), following proper naming and profiling conventions - Prepare and add pleading coversheets to documents received via facsimile and hand-delivery, so they can be filed with the court - Assist with organizing a high volume of paper documents and tracking when they can be properly disposed of - Prepare and send a high volume of different types of mailings - Service requests including questions or tasks from Legal Assistants and Attorneys that need to be addressed while physically in the office; Examples: printing projects, file indexing, large scanning projects, large mailing projects (including default notice mailings), preparing digital and printed binders (including hearing binders); courthouse runs - Back up for other back-office positions as needed - Assist with training of new back-office staff in standard operating procedures Qualifications - Must be extremely detailed oriented and produce accurate work - Must be organized and have great follow through skills - Excellent verbal and communication skills (particularly written) - Must be comfortable approaching individuals at all levels within the firm by telephone, email correspondence, and in person with confidence and clarity - The ability to solve problems in a methodical, practical way - Ability to thrive in a team environment and look for opportunities to help teammates - Must be able to keep a positive attitude in a fast-paced work environment - Must be solution driven and customer-service oriented - Strong people skills are imperative - Autonomous, self-starter with ability to work independently as well as in a team - Proficiency with standard office computing applications (MS Office) including Outlook, Word, and Excel - Must be able to regularly lift 40 lbs. and be able to be on your feet throughout the day - Some office administrative experience preferred - College degree preferred Physical Activities and Requirements of this Position Physical Strength Ability to independently lift and carry office supplies that may include boxes of paper (up to 40 pounds) in a variety of environments. Ability to stand and work for longer periods of time, i.e., completing large copy jobs, scan jobs, etc. Ability to sit and work for longer periods of time, i.e., document production tasks, etc. Manual Dexterity Ability to use fingers, wrists, and hands to perform repetitive motions over extended periods of time. Visual Ability Average, ordinary visual acuity necessary to prepare or inspect documents and operate equipment. Mental Activities and Requirements of this Position Reasoning Skills Ability to apply common sense understanding and carry out detailed instructions; Ability to organize and prioritize projects and tasks; and Ability to successfully manage and ultimately solve a variety of problems. Communication Skills Capacity to consistently demonstrate the ability to maintain good professional relationships with co-workers and clients while executing job duties and problem solving with others; Ability to verbally express ideas and information using a good vocabulary and with diplomacy and tact; and Ability to communicate in writing using grammatically correct syntax as well as correct spelling and punctuation. Working Conditions No hazardous conditions (such as in a typical office). Related Information In no instance should the duties, responsibilities and requirements delineated in this document be interpreted as all-inclusive. In accordance with the Americans with Disabilities Act, it is possible that requirements may be modified to reasonably accommodate disabled individuals. However, no accommodation will be made which may pose serious health or safety risks to the employee or others or which impose undue hardships on the organization. Job descriptions are not intended as and do not create employment contracts. The organization maintains its status as an at-will employer. Performance Evaluation Schedule for This Position Formal performance evaluations are normally conducted after the first 90 days of employment and annually on the anniversary of date of hire or promotion. Employees’ performance is evaluated in the following categories: job knowledge; reliability and dependability; written work product; accuracy and quality of work; adaptability and flexibility; productivity and organizational skills; professionalism and working relationships; judgement and initiative; commitment and client support.; and overall rating. Other communications regarding job performance and expectations may take place from time to time and can be initiated by either Montgomery Purdue management or employees.
701 5th Ave #300, Seattle, WA 98104, USA
$50,000-56,000/year
Cookie
Cookie Settings
Our Apps
Download
Download on the
APP Store
Download
Get it on
Google Play
© 2025 Servanan International Pte. Ltd.