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Legal Staff Paralegal in Washington, DC

Akerman LLP Aug 07,2021 May 24,2021 Location Washington DC
This job is expired...

Law Firm

Legal Staff

Intellectual Property - Trademark/Copyright

Min 5 yrs required

Profile

Paralegal (Patent and Trademark Prosecution) The candidate should have 5+ years of experience as a patent and/or trademark (preferably both) prosecution paralegal at a law firm directly handling large patent or trademark portfolio prosecution tasks such as: Manage a full docket of patent and trademark-related deadlines, send timely reminders to clients and attorneys, and ensure that deadlines are handled and collect information and instructions. Prepare and file U.S. and Madrid trademark applications, declarations, renewals, extensions of time, and other USPTO filings. Prepare and file U.S. provisional, non-provisional, convention and design patent application documents and PCT and Hague applications, along with related application data sheets, declarations, and other documents. Prepare and file information disclosure statements, including obtaining copies of foreign references and machine translations. Assist with preparation and filing of responses to patent and trademark office actions. Conduct in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database. Record documents such as assignments, name changes, and lien releases with the USPTO and comprehend chain of title issues and ability to prefect same. File documents with the TTAB and prepare non-substantive procedural filings. Instruct and supervise patent and trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with foreign patent and trademark offices. Create customized patent and trademark records reports for clients. Support patent and trademark due diligence for mergers and acquisitions. Should have extensive knowledge of U.S. patent and trademark rules and procedure; working knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein and familiarity with the Madrid Protocol, Hague and PCT requirements. Must have a broad understanding of and to be able to independently use and/or file documents via PAIR, EFS Web, Patent Center, Global Dossier, EPAS, ePCT, WIPO IP Portal, TEAS, ETAS, TTABVUE.

Additional info

Requisition Number: PARAL01982

Company info