Paralegal - IP

Carlton Fields • Tampa, FL

9d

About The Position

AmLaw firm seeks experienced Intellectual Property (IP) paralegal. The IP Paralegal supports attorneys in delivering the highest level of service to internal and external clients alike for patent and trademark prosecution, IP portfolio management, proceedings at the Patent Office, and supports litigation in federal and state courts. As a contributing team member, the IP Paralegal is pro-active in balancing multiple work demands, taking personal responsibility for the quality and timeliness of his/her work and maintaining client and Firm confidentiality.

Requirements

• Bachelor’s Degree or paralegal certificate required.
• 5+ years of paralegal, IP Administrator, or other relevant experience required.
• Experience using PattsyWave or similar IP docketing systems
• Experience using PAIR, EFS-Web, ePCT and PCT-SAFE, eCO

Nice To Haves

• Experience using Compulaw preferred
• Certification and training in an eDiscovery platform (e.g., Relativity) preferred.

Responsibilities

• Prepare formal documents and file U.S. patent, trademark, and copyright and applications, coordinate filing of foreign applications
• Prepare documents and review patent and trademark related documents, such as correspondence and filings covering all aspects of U.S. patent and trademark prosecution.
• Coordinate and communicate with clients, draft correspondence, prepare office action response shells, prepare Information Disclosure Statements and prior-art reference management, assignment recordations, inventor declarations, application data sheets, continuing applications, etc.
• Support litigation activities in federal and state courts, including preparing pleadings, docketing, filing, drafting case summaries, drafting discovery responses and supporting the trial preparation process
• Perform legal research
• Support IP portfolio management clients, including maintaining dockets and preparing regular reports of outstanding matters, coordinating foreign filings and opposition proceedings, and participating in regular client status calls.
• Assist with prosecution docketing tasks as needed.
• Correspond with foreign associates, oversee payment of foreign associates' invoices, and prepare reporting letters to clients.
• Perform on-line research via public access websites, U.S. and foreign patent offices.
• Organize and maintain electronic client files.
• Update monthly status reports for select clients.
• Complete special projects including assignment, intake, and due diligence projects, as assigned.
• Support Patent Office adversarial proceedings such as TTAB cancellation and opposition proceedings, and PTAB ex parte and inter partes proceedings
• Additional duties as assigned.

Benefits

• Carlton Fields provides a comprehensive suite of benefits to promote health and financial security, including medical, dental, and vision insurance as well as life, accident, and disability insurance plans.
• The firm also provides the opportunity to participate in 401(k) retirement benefits, commuter benefits, and well-being programs.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level
• Number of Employees: 501-1,000 employees