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Intellectual Property Paralegal Duties: Execute searches on . and international patent databases re: patent family information, ownership/inventor information and other data as needed. Work with attorneys to prepare and file applications with the USPTO with regard to formality requirements, including electronic filing of all documents with the USPTO. Monitor cases and prepare and file Information Disclosure Statements. Monitor status and work with attorneys/clients re possible priority-based PCT and/or other foreign applications. Work with attorneys to ensure timely responses to Office Actions, payment of issue fees, and submission of formal drawings. Review granted patent documents to determine maintenance requirements and calculate term. Patents - PCT (Patent Cooperation Treaty) Conform applications and drawings to PCT formatting requirements and prepare request forms, ensuring correct applicant, inventor, and priority information (if applicable). Comply with other formalities (POA forms, formal drawings, etc.), and select the desired International Search Authority. File all applications, drawings, and other documents electronically. Receive input from attorneys regarding International Search Reports and relevancy of cited art, and discuss strategies with responsible attorneys regarding possible Article 19 and/or Article 34 amendments and ensure cited art is properly disclosed in corresponding national cases. Monitor PCT timeline, ensuring timely filing of Demand and national/regional entry. Work with attorneys and clients to evaluate findings set forth in International Preliminary Examination Reports and select countries for national/regional entry. Assist with preparing cost estimates in connection with selection of countries for national/regional entry. Foreign Patents (including national/regional entry from PCT cases) and Trademarks Assist with preparing correspondence to foreign associates, ensuring transmission of all required documents, and work with foreign associates through compliance with local required filing formalities, including legalization of documents if necessary. Monitor status to ensure timely filing of request for examination and dates for payment of requisite maintenance fees in patent cases. Review granted patent documents to determine maintenance requirements and calculate term. Work with attorneys and clients regarding validation procedure after grant of European patents. Work with attorneys upon receipt of office actions issued by foreign offices to ensure proper instructions and timely responses in both patent and trademark cases. Review Certificates of Registration to determine renewal dates and use requirements in trademark cases. Execute availability/preliminary screening searches on trademark databases, including available international databases. Conduct on-line internet searching for possible conflicting domain names or other internet usage. Work with attorneys and clients to determine correct mark, including design image, if any, and proper classification of goods or services. Assist with preparing and filing trademark/service mark applications, either use-based or intent-to-use via electronic filing. Monitor status and work with attorneys and clients regarding possible priority-based foreign applications. Review office actions issued by the USPTO and assist with preparing draft responses. Determine acceptability of specimens evidencing use and assist with preparing and filing Amendments to Allege Use or Statement of Use. Review Certificates of Registration for accuracy and determine dates for evidence of continued use/incontestability and renewal. Assist with preparing and filing Section 8 and 15 Affidavits and Renewal Applications. Assist with preparing and filing Trademark and/or Trade Name Registration forms (State). Work with attorneys and clients to determine type of copyright work, correct authorship, and copyright claimant. Complete electronic copyright registration forms, including Request for Special Handling, if appropriate.
Qualifications: Certificate from well-accredited paralegal training program a plus. 3+ years of relevant experience with either . and foreign patents, trademarks and/or copyrights, but having experience in all areas is a plus. Baccalaureate degree preferred. Significant IP paralegal experience can replace educational requirements. Strong work ethic and ability to self-start. Ability to multi-task and prioritize assignments while delivering consistent, quality work-product to both attorneys and clients. Strong attention to detail. Ability to work independently with appropriate supervision and to seek help when needed. Strong written and verbal communication skills. Will have a professional appearance. Strict adherence to confidentiality is required.
