IP Paralegal
About The Position
Bell Nunnally, a highly respected business law firm with a record of success spanning over four decades, is seeking an intellectual property paralegal experienced in prosecution for its IP practice group. This position provides organizational and practice specific assistance to IP attorneys by managing patent prosecution matters and backup trademark and copyright matters plus general support with administrative duties and special projects related to IP. This role offers the opportunity to support a dynamic team in managing diverse and sophisticated portfolios of domestic and international intellectual property assets. The ideal candidate will bring a minimum of three years of hands-on patent prosecution experience, along with demonstrated proficiency in trademark and copyright matters.
Requirements
- A working understanding of U.S. and foreign patent and trademark prosecution and lifecycles (Nonprovisional, Provisional, PCT, Madrid Protocol).
- Identify and analyze complex issues and problems in relation to managing data and docketing corresponding deadlines.
- Independently determine priority dates, calculate due dates, and verify term periods in the docketing database.
- Strong familiarity with various patent and trademark office e-platforms (USPTO Patent Center and Trademark Center, WIPO, EPO, TTAB, PTAB) and demonstrate resourcefulness in obtaining data and filing accuracy verification.
- Recognize confidential, sensitive, and proprietary information and maintain confidentiality.
- Participate in internal and external training in IP law and/or in IP docketing to maintain and enhance skill set.
- Exhibit excellent proofreading skills and a high level of accuracy.
- Ability to work independently as well as a team member.
Responsibilities
- Maintain an accurate docketing database and ensure full docket clearance on a daily basis in accordance with established policies and procedures.
- Docket all case data using AppColl, including docketing deadlines, entering and/or updating inventor or applicant/assignee names, and docketing/entering any other relevant data. Information from incoming and outgoing correspondence from clients, agents, foreign IPOs, USPTO, and third-party communications should be reviewed, processed, and integrated to ensure that all case records are up to date and accurate.
- Maintain and distribute an electronic docket calendar for domestic and international patents and trademarks and as required within established guidelines and procedures, and provide reports as requested including client portfolio reports, patent family reports, monthly, quarterly and annual reports, etc.
- Verify the accuracy and integrity of all data entered, both the creation of new case records, as well as diligent review and analysis of existing case records.
- Handle daily maintenance of any instructed patent matters, including the review and docketing of any prosecution and opposition proceedings, for existing or newly transitioned patent portfolios.
- Draft USPTO Office Action response documents and client emails reporting received USPTO communications and USPTO filings.
- Assist attorneys with U.S. and foreign prosecution deadline verifications as needed.
- Scan client and legal documents to firm’s electronic document management system (iManage).
- Manage invoices and data received from foreign associates for designated foreign applications, issued patents, and registered trademarks.
Benefits
- covering both health and dental premiums for our employees
- 401(k) with employer match
- paid time off
- paid parental leave
- free garage parking
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What This Job Offers
Job Type
Full-time
Career Level
Mid Level
Education Level
No Education Listed
