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Legal Staff Paralegal in New York City, NY

Mayer Brown LLP Sep 19,2020 Sep 09,2020 Location USA New York City NY
This job is expired...

Law Firm

Legal Staff

Intellectual Property - General

3-5 yrs required

Profile

Paralegal - IP (Intellectual Property) The candidate's responsibilities includes: Involve in a paralegal that can apply a wealth of Patent Litigation experience to the assignments at hand and any future assignments that will arise as the practice group expands with the addition of new cases and new associates. Research and compile information pertaining to: National and international intellectual property rights; Procedural matters and case law; Unfair competition and copyright infringement actions. Compiling search results and summarizing into formats such as charts or spreadsheets for easy access and dissemination to the team. Prepare status summary reports for attorneys and clients. Assisting with due diligence process including searching for patent, trademark and copyright status and ownership/assignment information. Tracking down patent file wrappers, trademark oppositions and other publically available IP related documents. Serving as a resource to attorneys with questions regarding IP registration and portfolios. Perform on-line searches of Patent Trademark Office (PTO) records, European Trademark databases (OHIM), industry databases and legal research. Conduct searches regarding trademarks. Review all products, advertising and packaging to ensure proper use of client’s trademarks. Function as a knowledge base for attorneys and other team members to consult regarding practices and procedures for both international and national matters.

Qualification and Experience

The candidate must have Bachelor’s degree in a related field and a Paralegal certificate. Should have an equivalent combination of education and/or experience may be considered in lieu of the degree when the experience has been directly related to the functions of the job. Must have 3-5 years of IP paralegal experience required. Should have proficiency in Microsoft Office products. Must have knowledge of international filing practices and procedures and knowledge of IP docket systems and recording of due dates including responses, renewals, oppositions, Section 8 and 15 affidavits, Patent Cooperation Treaty requirements and payments of patent annuities in foreign countries. Should have familiarity with special IP related trade publications. Electronic Case Filing (ECF) Experience. Must have experience with and knowledge of process for filing of applications, statements of use, renewal applications, affidavits of use and assignments as well as responses to PTO actions and oppositions. Should have knowledge of procedures for policing client’s patent and trademarks against potential infringements and knowledge of procedure for maintaining foreign patent and trademarks, which includes corresponding directly with foreign associates and instructing them to search trademarks and to file applications, renewals, affidavits of use and oppositions also have knowledge of legalizations and certifications for filing of foreign patent and trademarks. Strong written and verbal communication skills, able to communicate effectively and in a professional manner with all levels of the Firm and outside vendors. Must have ability to work in a diverse team environment and effectively support the demanding needs of the Firm and also have ability to meet deadlines with shifting priorities. Must be a self-starter with a high level of initiative. Should have strong customer service skills, able to anticipate needs and exercise independent judgment (for exempt roles, when applicable) and strong attention to detail, organizational skills and the ability to handle multiple projects. Maintains confidentiality and exercises discretion.

Additional info

Job ID: 2020-2957

Company info