IP Paralegal Job Description

United States

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'An intellectual property paralegal—or “IP” paralegal—is a paralegal who works in the area of intellectual property law, such as copyright, patent, or trademark law. IP paralegals assist IP attorneys with the work they do for clients. Because IP paralegals are not attorneys and have not been admitted to the patent bar or to the bars of any state, IP paralegals must always work under the direction of a practicing attorney. The kinds of tasks an IP paralegal might work on depend on the type of attorney he or she works for. An IP paralegal who works for an attorney who does patent prosecution might help draft the paperwork needed to be filed with the United States Patent and Trademark Office in connection with a patent application for a new scientific invention. An IP paralegal who works for an attorney who does copyright law might help the attorney secure a copyright for a novelist who just finished writing a new book.

Here are a few sample IP Paralegal job descriptions:

IP Paralegal

The candidate will be handling various trademark and general IP prosecution matters including application appeals, oppositions and invalidations. Will put legal drafting experience to use by drafting submissions and legal advice in relation to trademark, domain name and copyright issues. Will attend to formality objections to trademark application. In addition will prepare monthly status reports for portfolio clients and maintain a database for the team. Should have law degree or equivalent. Must have 2+ years of relevant working experience. Candidates with 6 -12 months of IP experience coming from a reputable law firm will also be considered. Fluent/near native Mandarin speakers. PRC candidates are encouraged to apply. Good command of English and Chinese, in both speaking and writing.

IP Paralegal (evenings)

The candidate will be responsible for the creation, revision, and filing of US and PCT prosecution documents, and will provide overflow filing support for all Foley offices. This position will support various intellectual property attorneys in various office to provide excellent service to clients. Will be responsible for reviewing and maintaining a docket, for timely reporting of communications to the client and foreign associates, and for timely handling of various prosecution formalities. This is a position with an annual 1500 billable hour requirement. Must have 2+ years' experience in U.S. and/or international prosecution and a high school diploma or a paralegal certificate or a Bachelor's Degree. Thorough knowledge of patent procedural requirements and USPTO practices required. The position requires excellent attention to detail, strong organizational and prioritization skills with the ability to meet deadlines in a fast paced environment. Analytical thinking and problem solving skills are essential. Ability to work both independently and in a team environment is a must. Strong customer service orientation and oral and written communication skills to effectively interact with all tiers of personnel and clients are essential. A working knowledge of Microsoft products and an accurate minimum typing speed of 50 wpm are also required.

Note: Required working hours will be between 12:00 pm - 9:00 pm, with a lunch break in between.

IP Paralegal (Trademarks)

Duties: Support to attorneys within IP law (i.e. Intellectual Property, mainly trademark, design and copyrights) and associated branches of law, and to take care of the follow-up of their files (advice on IP matters, searches, filing of trademarks, domain names and designs, conflict handling, etc.). Drafting letters and official documents. Preparation of legal files. Administration and follow-up of files, price-quotes, invoices and follow-up of billing. Accurate database input. Contact with clients by phone, e-mail or in meetings. Work together with other colleagues. Independent monitoring of deadlines. Administrative office management.
Qualifications: A degree in Applied Law or a Bachelor in Law. Relevant experience in a legal environment is a must. With level Dutch mother tongue and excellent command of English and French, written and oral. Affinity with MS Office, internet and e-mail. An eye for administrative and juridical precision. Sense of responsibility. Able to work alone but also in a small team. Eager to learn and flexible. Stress resistant and able to cope with tight deadlines. Motivated with a positive attitude.

IP Paralegal / Legal Assistant

Duties: Patent/Trademark prosecution support, including electronic filing of US applications/responses (US and PCT. Handle general prosecution timeline for each), foreign applications and responses, IDS's, assignments, prior art, other support documents; daily maintenance/operation of docketing system including the docketing of all prosecution and due dates for all patents, annuities and trademarks; maintaining and generating docket reports for attorneys; legal support for discovery, researching, basic due diligence; transactional support with scanning, review for critical dates, ensuring timely response for correspondence.
Requirements: 1-2+ years of patent prosecution experience. Experience with docketing best practices and protection of Intellectual Property rights. Experience with patent docketing programs. Experience with electronic research tools and patent prosecution filing systems (ie: WIPO, USPTO, LexisNexis). Knowledge of U.S. Patent/Trademark Rules and patent/trademark prosecution. Knowledge of Foreign Patent/Trademark Rules and foreign patent/trademark prosecution. Proficient in Microsoft Office Suite and Adobe Acrobat. Superior attention to detail, problem solving capabilities, strong organizational and multi-tasking skills. Strong interpersonal skills required to work effectively with people at all levels in the firm, clients and vendors. Must be able to work independently and as part of a team. Must project a professional demeanor, effectively represent the firm, exhibit sound judgment and maintain confidentiality. Must possess exceptional oral and written communication skills. Strong proofreading skills. Ability to work effectively with minimal supervision in an atmosphere of multiple projects, shifting priorities, and deadline pressures.

IP Paralegal

The candidate will: Assist attorneys in the practice of intellectual property law, specifically patent prosecution. Responsibilities: Experience in filing electronically with the United States Patent and Trademark Office (USPTO); Docketing patent deadlines and coordinating with firm-wide IP paralegals on related matters; Working knowledge of patents, trade secrets, copyrights and/or trademarks; Monitor applications and file responsive forms; File replies or requests for reconsideration during phases of process; Conduct patent research; Support attorneys during patent litigation by drafting pleadings, locate case law, prepare exhibits; conduct discovery and correspond with experts and other witnesses; Communicate with clients, vendors, USPTO personnel, court personnel, experts, attorneys and others as directed. 3 years' relevant experience.

IP Paralegal

The candidate will be supporting top tier staff with great career progression. Will be filing, amending and preparing Patent applications at a UK and EU level. Liaising with and updating senior fee earners in relation to important cases. Producing varying official letters and communications to send to clients. Updating the firms DMS with required information. Diary management. Must be experienced Patent Secretary or Administrator. Patent experience is essential. CIPA qualified is a plus. Should have CITMA qualification, strong Patent working experience from a records, formalities or secretarial background.

Junior IP Paralegal

The candidate will support multiple patent attorneys/agents, manage US and foreign dockets, assist with US and foreign patent filing and prosecution, manage attorney/agent calendars, manage meetings and prepare travel arrangements. Will assist in-house counsel in the preparation, filing and prosecution of US patent applications including: preparation and submission of Office Action responses, Information Disclosure Statements, Amendments, RCE's, formal document preparation and execution (Declarations, Assignments, Powers of Attorney). Prepare meeting, travel arrangements and expense reports. Independently draft letters, memos and email correspondence to in-house attorneys/agents and colleagues as well as outside counsel law firms.
The candidate must have 6+ years of administrative/paralegal experience in intellectual property law; or Paralegal certificate and 4+ years of work experience in a law firm, an in-house legal department, a consulting firm, or comparable experience elsewhere. Basic knowledge of US and foreign patent procedures is required. Notary Public Commission is needed. Should have basic knowledge of intellectual property paralegal concepts and principles. Excellent docket review skills and proofreading skills are essential. IP paralegal experience in pharmaceutical industry preferred. Experience with IP Management software; IP Digital Document Management software; and PTA calculation, review and analysis is preferred. Must be proficient in MS Office (Word, Excel, Outlook, etc.).'

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