What are the responsibilities and job description for the Intellectual Property Paralegal position at C&M Legal Search, LLC?
Intellectual Property Paralegal
Job Summary: As an integral part of the team, the Intellectual Property (IP) Paralegal assists the IP attorneys with all aspects of the dynamic intellectual property practice. This includes counseling, clearance, licensing, prosecution, business transactions involving intellectual property, maintenance, enforcement and litigation. The IP Practice Group represents clients in a broad range of industries including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services.
Responsibilities:
Knowledge, Skills and Abilities:
Working Conditions and Physical Effort:
Job Summary: As an integral part of the team, the Intellectual Property (IP) Paralegal assists the IP attorneys with all aspects of the dynamic intellectual property practice. This includes counseling, clearance, licensing, prosecution, business transactions involving intellectual property, maintenance, enforcement and litigation. The IP Practice Group represents clients in a broad range of industries including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services.
Responsibilities:
- Independently manage large trademark and design patent portfolios
- Identify potential new application filing recommendations and other issues
- Structure and conduct preliminary U.S. and international searches
- Analyzing and report preliminary search results
- Coordinate U.S and international full search projects
- Prepare responses to U.S. Office Actions and Information Disclosure Statements
- Work with foreign counsel on all aspects of searching, filing, prosecution, maintenance, disputes, and ownership
- Draft correspondence to clients including summaries of issues, recommendations, risk assessments
- Prepare and record worldwide assignments and other post-transaction closing documents impacting trademarks
- Assist with U.S. and international oppositions and cancellations
Knowledge, Skills and Abilities:
- Minimum of 6-8 years on-the-job experience as an intellectual property paralegal, ideally in a law firm
- Must be proactive with strong research and analytical skills
- Highly organized with superior attention to detail
- Excellent communication skills with the ability to effectively communicate with clients
- Significant domestic and international experience including overall trademark and design patent portfolio management, clearance, due diligence, registration, maintenance and enforcement
- Ability to independently oversee all aspects of U.S. and foreign trademark and design patent prosecution, maintenance and disputes
- Ability to manage large, complex, international trademark and design patent portfolios
- Ability to prepare and submit design patent applications, including all supporting documents
- Ability to independently manage assigned docket dates including due date, reminders and follow-up actions in a timely manner
- Ability to analyze new and existing portfolios to identify gap filing recommendations, ownership and other issues
- Preliminary trademark search experience, preferably via Corsearch’s online platform
- Experience coordinating international full search and trademark application filing projects, including analyzing each project, providing recommendations, corresponding with clients and foreign counsel, and analyzing and summarizing foreign associate opinions and recommendations
- Must be proficient with relevant IP websites and databases including USPTO and WIPO, preferably Corsearch for searching and trademark watching, as well as experienced with vendors such as Clarivate/CompuMark, Corsearch, PageVault , Orbit, etc.
- Ability to complete electronic filings in the USPTO, including the TTAB, and WIPO, and to delegate such filings as appropriate
- Familiarity with TTAB rules and procedures a plus
- Experience analyzing chain of title and updating IP ownership in the U.S. and internationally
- Experience analyzing trademark watch notices and managing watch services
- Must be able to analyze complex trademark and design patent portfolio matters
- Must be able to synthesize foreign associate opinions and recommendations into client correspondence
- Must be flexible and able to work collaboratively with supervising attorneys, paralegals, docketing, and other team members
- Experience with trademark and patent docketing software, preferably CPI, including docket entry, searching, and preparing reports, a plus
- Experience with domain name registration and management, copyrights, social media is a plus
- Must be available and willing to work overtime
Working Conditions and Physical Effort:
- Work is normally performed in a typical office work environment
- The Firm will consider remote work options for this position
- Limited physical effort required and very limited exposure to physical risk
- Must be able to comply with all safety requirements when in the workplace
Intellectual Property Managing Associate
Vanguard-IP -
Chicago, IL
