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Paralegal, Intellectual Property The candidate will maintain patent and trademark databases and dockets for all pending and granted patents & trademarks, including constructing and generating reports requested by attorneys and business units. Will maintain Intellectual Property support: review and recommend activities, technologies or processes to enhance productivity and reduce costs. Review, docket and assignment of correspondence from the U.S. and foreign patent offices worldwide. Deliver correspondences to appropriate attorney and make suggestions, when appropriate, on required response. Correspond with foreign agents on various patent matters including responsibility of all patent annuities. Review patent family files for examination reports and prior art citations. Provide foreign agents with results of the foregoing. Instruct Administrative Assistants to prepare and file supplemental information disclosure statements with the U.S. Patent Office based on foreign examination reports. Review formal papers for new patent applications to be filed in U.S. Patent Office for completeness and accuracy. Keep abreast of changes to patent and trademark laws to maintain knowledge of changes in the administrative procedures required. Manage the docketing of invention disclosures. Assist with divesture, acquisition, name change and assignment matters as they relate to intellectual property. Prepare the Intellectual Property Department Monthly Report. Provide information to business units regarding budgeting of patents and trademarks. Initiate and carry out the foreign filing process, including the filing of foreign patent applications. Correspond and follow-up with business unit management and foreign agents. Handle the payment of annuities required to maintain Foreign Patent portfolios. Monitor and request funding for USPTO Deposit Account. Perform trademark searches and provide opinions on availability to the business units. File new trademark applications worldwide and renew of existing registrations. Prepare responses and documents required for responding to trademark office actions worldwide. Review Trademark Gazettes and watch service notices for possible infringements of trademarks. Assist outside counsel in trademark infringement proceedings. Maintain the title of trademarks in the U.S. and worldwide, including recording name changes and assignments. Paralegal certificate is preferred. Associate's degree with a 5+ years of intellectual property paralegal experience OR High school diploma with a minimum of 10 years of intellectual property paralegal experience is needed. Proficiency in Word, Excel and Access, CaseTrack and other intellectual property management software is needed. Business process knowledge: Legal, Business Administration and technology systems are needed. Excellent grammar and spelling; accurate typing and proofreading; proven PC skills are needed. Professional image and accountability required is needed.
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