INTELLECTUAL PROPERTY PROSECUTION PARALEGAL

Our client, a top Am 100 law firm, is seeking an experienced Intellectual Property Prosecution Paralegal for their offices in New Jersey or New York. The ideal candidate will have at least 5 years of experience in a law firm setting, specifically in intellectual property prosecution.   

Essential Duties and Responsibilities:   

● Prepare and electronically file a variety of USPTO trademark prosecution and maintenance documents, including applications, responses to office actions, and various other legal forms.   

● Manage the preparation and filing of trademark documents with WIPO and under the Madrid Protocol, including international registrations and responses to irregularities. 

● Liaise with foreign counsel to manage international trademark applications and registrations, including document legalization.   

● Communicate regularly with clients about the status of trademarks and impending deadlines. 

● Conduct preliminary trademark searches using online and USPTO resources. 

● File copyright registrations and perform due diligence on IP assets for corporate transactions.   

● Support litigation activities, including preparation for TTAB proceedings and UDRP actions. 

● Handle all aspects of patent prosecution in the US, PCT, and foreign jurisdictions, including filing design applications and managing deadlines.   

● Maintain and monitor IP deadlines using docketing software, preferably CPI, and ensure communication of deadlines to attorneys and staff.   

Qualifications:   

● A college degree and/or a paralegal certificate are required.   

● Proven organizational skills with the ability to prioritize and manage a considerable workload effectively.   

● Strong team player with excellent communication skills, both written and verbal.   

● Proficient in MS Office (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance. Familiarity with iManage is advantageous.