IP Paralegal

Description

About Davis Graham & Stubbs

For over a century, Davis Graham & Stubbs LLP (DGS) has ranked among the region's most prominent law firms, consistently offering quality legal services to emerging and established businesses of the Rocky Mountain West. While the firm's Denver location and intermediate size allow a close personal relationship with local and regional clients, our technology and broad experience allow us to partner effectively with businesses and their investors throughout the world. DGS serves clients nationally and internationally, with a strong focus on corporate finance and governance, mergers and acquisitions, natural resources, environmental law, real estate, intellectual property, and complex litigation. Our lawyers have experience working with companies in the energy, mining, technology, hospitality, private equity, manufacturing, asset management, and aviation industries.

Davis Graham & Stubbs seeks to hire an experienced IP paralegal to work with a growing IP practice. Ideal candidates will have 3-5 years experience supporting IP attorneys with trademarks, copyrights and licenses, and patents. Experience filing documents with the USPTO and PCT is required. Successful candidates will have excellent organization skills, attention to detail, and time and case management skills with the ability to handle multiple portfolios. Knowledge of international procedures, foreign associate management, foreign associate billing, and the Black Hills IP docketing platform is highly preferred.

Summary

This position supports attorneys in a wide range of IP services, including trademarks, copyrights and licenses, and patents including, but not limited to, portfolio development, trademark disputes, patent prosecution, marketplace enforcement, and IP transactions. This position performs both US and foreign patent services.

Essential Functions

• General trademark experience, including clearance, prosecution, and enforcement
• Thorough knowledge of patent procedural requirements and US Patent and Trademark Office (USPTO} practices required
• Understanding of docketing and deadlines and action(s) required
• Maintains a working knowledge of foreign trademark and patent law
• Prepares patent filing documents, shells, correspondence, etc. relating to USPTO, foreign offices, and foreign associates on patent matters
• Prepares basic US, provisional, non-provisional, convention and design application documents, including transmittals, Application Data Sheet and drawings
• Reviews and maintains a docket for timely reporting of communications to the client and foreign associates
• Reviews dockets and complaints for active patent and trademark litigation; timely handling of various prosecution formalities
• Reviews and analyzes IP search reports, determining status and ownership of properties, presence of outstanding liens and chain of title issues
• Reviews patent and trademark documents recorded at the USPTO and/or conduct web research to aid in analyzing and clarifying chain of title
• Prepares intellectual property schedules based on an understanding of requirements of for various types of transactions
• Communicates with appropriate attorneys and team members about docket
• Drafts memoranda summarizing types of searches conducted, and contents of an IP portfolio and issues relating thereto
• Reviews IP disclosure schedules, noting outstanding issues and drafting footnotes
• Resolves discrepancies between target company IP disclosures and K&E search results
• Completes basic formality documents for national filing requirements, including Powers of Attorney, assignments, and inventor declarations
• Completes legalization of documents, as required
• Orders priority documents and assignments from the USPTO; obtain foreign priority documents
• Reviews Notices of Allowance, prepare corresponding checklist, and report to client
• Maintains confidentiality of all client and firm information
• Maintains a billing rate and meets or exceeds the billable hours target of 1600 per year
• Performs other duties as assigned

Required Skills/Abilities

• Ability to organize large volumes of materials and multiple cases
• Ability to learn, interpret, and apply policies and procedures
• Detail oriented and professional demeanor
• Ability to effectively communicate and work cooperatively with attorneys, staff, clients, coworkers, and vendors
• Ability to act as a peer mentor and assist with training as needed

• Advanced proficiency with, or ability to learn, software programs(s) used by the firm for conflicts and new business intake, recordkeeping, timekeeping and billing, document management and workflow and willingness to attend trainings and develop proficiency when new technologies are rolled out

• Excellent understanding of legal, clerical, and court systems
• Ability to organize and prioritize tasks including delegation of tasks when appropriate
• Extensive knowledge of the roles and function of the assigned department, and any specifically applicable laws or guidelines
• Ability to recreate content based on experience

Supervisory Role

None

Work Environment

This position requires the employee to work in a professional office environment with some ability to work from home. Because the employee will handle sensitive firm and client information, the employee must work from a home office and not a public location during any remote periods. The employee will routinely use standard office equipment.

Physical Demands

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Prolonged periods sitting at a desk and working on a computer.

Position Type and Expected Hours of Work

This is a full-time, benefits eligible position. Hours are Monday through Friday, 8:00 am to 5:00 pm, with some flexibility in start and end times and a minimum of 3 days in the office. Occasional overtime is required.

Required Education and Experience

High school degree or equivalent and a minimum of five years of IP paralegal experience or equivalent, including USPTO filing experience

Preferred Education and Experience

Bachelor’s Degree, Notary Public, Paralegal Certificate, experience in docketing systems such as Black Hills IP

Other Duties

Please note this job description is not designed to cover or contain a comprehensive listing of activities, duties or responsibilities that are required of the employee for this position. Duties, responsibilities, and activities may change at any time with or without notice.

Please click for more information about DGS Benefits

Davis Graham & Stubbs provides equal employment opportunities to all employees and applicants for employment without regard to race, color, religion, gender, sexual orientation, transgender status, gender identity or expression, national origin, age, disability, marital status, genetic information, military status or any other status protected by applicable federal, state or local laws.