Intellectual Property Prosecution Paralegal

Prominent law firm is seeking an Intellectual Property Prosecution savvy Paralegal with 5+ years of experience to join its New Jersey team.

Candidate will have the following: 5+ years of intellectual property prosecution paralegal experience within a major law firm setting (experience will be current or very recent) ;

Academic credentials ; College degree and/or paralegal certificate required ; Strong research, verbal & written communication skills ; Keen working knowledge of MSOffice (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance required. Knowledge of iManage a plus.

Excellent work environment and benefits package with competitive compensation commensurate with experience.

Responsibilities include, but are not limited to:

-Preparing and filing 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.

-Identifying and prepare appropriate specimens of use for submission to the USPTO, and communicate with clients regarding same.

-Preparing and filing 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.

-Conducting preliminary trademark clearance searches online and USPTO website.

-Working 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.

-Communicating with clients regarding trademark status and upcoming deadlines as needed.

-Preparing and filing copyright applications for registration.

-Conducting due diligence on trademark portfolios and IP-related corporate transactions.

-Assisting with preparation and filing TTAB petitions, motions, and other paperwork.

-Assisting with investigations of third-party use of marks, preserving evidence, creating PDFs and making exhibits for briefs and other filings.

-Assisting in preparation and filing of UDRP actions.

-Preparing and file, or instruct, on all aspects of US, PCT, and foreign prosecution.

-Filing and assisting in prosecution of design applications (including convention deadlines for filing abroad).

-Assisting clients with ongoing third-party patent monitoring.

-Ensuring deadlines are calendared and reported; experience with using trademark docketing software systems, preferably CPI.

-Reviewing files and prepare of Information Disclosure Statements and accompanying documents.

-Maintaining a docket of IP deadlines and coordinate and communicate deadline responses with relevant attorneys and staff.
Employment Type: Full-Time
Salary: $ 76,500.00 179,000.00 Per Year