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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Paralegal - IP Law The candidate will assist in preparation of royalty distribution memorandums; enter royalty review information into a financial information system. Will receive, enter, and track data related to license processing and royalty revenue, and produce related reports. Conduct basic legal research related licensing regulations. Research and analyze publicly available documents on file with the US Patent and Trademark Office and international patent officeâ€™s related to patents, patent applications and trademark registration. Research and analyze internal Agency databases and resources for tracking IP rights. Prepare reports that include the status of Agency IP rights in solicitations, grants, contracts, etc., as determined by research. Prepare letters and documents to outside researchers an contractors related to determining and perfecting the Agencyâ€™s IP rights. Assist attorneys in the research and drafting of internal and external analyses and reports related to issues impacting the Agencyâ€™s rights in IP. Research and analyze Agencyâ€™s IP rights before contested matters commence. Research and analyze Agencyâ€™s IP rights in contested matters such as administrative claims and litigatio. Research, analyze, compile, and catalog of documents as typically required in contested matters such as litigation, including answering and repairing requests for IP discovery. Assist in efficiently executing its IP mission by establishing and maintaining records and files including electronic files for tracking and updating the status of projects and tasks as directed. Provide other IP or IP-related assistance to the Contracting Officer Representative (COR) on an as-needed basis, such as litigation support in court cases and appeals. Assist attorneys in reviewing documents, including financial and accounting records provided in electronic or any other format. Recognizing issues related to IP data rights and proprietary assertions preferred. Provide other IP or IP-related assistance on an as-needed basis. This assistance may include litigation support in any cases or appeals involving IP matters. Track requests for trademark licenses, confirm that applicants for trademark licenses have provided all required documentation and supporting materials, prepare draft licenses, and prepare signature packages for trademark license execution. Maintain records on oppositions, cancellations, and other adversarial trademark matters. Review and evaluate each contract, grant and other agreements having a patent rights clause to determine whether a relevant invention might be conceived or developed under such contract or agreement. Research and analyze solicitations, grants, and contracts related to research funded by the Agency for issues involving IP rights, including reviewing documents for IP assertions by contractors. Establish and maintain an invention surveillance monitoring program to assist in ensuring that the Agency receives proper invention notification and that the Governmentâ€™s rights are appropriately established and documented. Establish and maintain records and files including electronic files of contracts and agreements being monitored (i.e. under surveillance). Perform investigative research including, but no limited to, conducting interview and reviewing technical reports and other relevant information in order to monitor the progress of each contract and agreement under surveillance. Establish and maintain relationships with appropriate Agency Program Officers, Contracting Officers, and with the Research Contractor point(s) of contact. Notify the Agency IP Program Manager of actual or potential rights compliance issues, and assist the Agency IP attorneys in the investigation of any such issue. Prepare and provide training presentations to Program personnel on an as-needed basis. Training shall cover, but not be limited to, the following topics: Standard IP clauses, in contracts and agreements, relevant research performer obligations, and other IP-related issues. Research and track important tasks and due dates in contested matters such as litigation. Participate in the development of electronic or web-based training materials in the areas of IP rights, litigation procedures and electronic discovery.
Qualification and Experience
The candidate should have a paralegal certificate, J.D. degree or equivalent training and work experience is required. Must have 5+ years of paralegal work experience supporting commercial transactional litigation which may be considered as equivalent training or work experience as referred to above. Must have 1+ year experience conducting basic legal research; demonstrated an understanding of events in commercial transactional litigation in US courts and administrative agencies; experience preparing requests and answers in discovery proceedings; experience organizing documents produced and received in discovery proceedings; experience using computers. Must have specifically Microsoft Office (Word, Excel, Access, and PowerPoint); experience with electronic discovery and electronic discovery database systems typically used in commercial transactional litigation such as InfoDox, Concordance or Summation; experience should include coding of databases and generation of reports. Must have experience in litigation before one or more of the federal courts or boards; experience in the use of the InfoDox e-discovery system; experience in IP litigation; and experience in litigation before one or more of the Federal Boards of Contract Appeals.
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