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Affordable Personnel Services - Maywood, NJ

posted 2 months ago

Full-time - Mid Level
Maywood, NJ

About the position

The Intellectual Property Prosecution Paralegal will support the legal team in managing and prosecuting intellectual property matters, particularly trademarks and copyrights. This role involves preparing and filing various legal documents with the USPTO and WIPO, conducting trademark searches, and maintaining communication with clients and foreign counsel. The position requires a high level of organization, attention to detail, and the ability to manage multiple deadlines effectively.

Responsibilities

  • Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO.
  • Identify and prepare appropriate specimens of use for submission to the USPTO and communicate with clients regarding them.
  • Prepare and file trademark documents with WIPO and through the Madrid Protocol.
  • Work with and correspond with foreign counsel regarding trademark applications/registrations outside of the U.S.
  • Communicate with clients regarding trademark status and upcoming deadlines.
  • Conduct preliminary trademark clearance searches online and on the USPTO website.
  • Prepare and file copyright applications for registration.
  • Conduct due diligence on trademark portfolios and IP-related corporate transactions.
  • Assist with preparation and filing TTAB petitions, motions, and other paperwork.
  • Assist with investigations of third-party use of marks and preserve evidence.
  • Assist in preparation and filing of UDRP actions.
  • Prepare and file, or instruct on all aspects of US, PCT, and foreign prosecution.
  • Proof and edit patent applications and office actions.
  • File and assist in prosecution of design applications.
  • Review files and prepare Information Disclosure Statements and accompanying documents.
  • Assist clients with ongoing third-party patent monitoring.
  • Ensure deadlines are calendared and reported, using trademark docketing software systems.
  • Maintain a docket of IP deadlines and coordinate responses with relevant attorneys and staff.

Requirements

  • 5+ years of law firm intellectual property prosecution paralegal experience.
  • College degree and/or paralegal certificate required.
  • Strong working knowledge of MSOffice (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance required.

Nice-to-haves

  • Knowledge of iManage is a plus.

Benefits

  • Salary range depends on experience, $80K-$175K.
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