Intellectual Property Paralegal

New York, NY 

The IP Paralegal is responsible for performing legal tasks, working on legal projects, and providing administrative support to attorneys. As an IP Paralegal, your duties and responsibilities will include these and other critical functions:

• Performing trademark, patent, copyright and domain name due diligence research using online and commercial databases, and preparing reports detailing results
• Preparing and filing security agreements and releases with the USPTO and the Copyright Office
• Conducting pre-screening trademark searches, and analyzing full trademark searches; Assisting with drafting analysis letters regarding risks and availability of mark(s) for use and registration
• Handling all aspects of U.S. trademark prosecution and maintenance, including maintenance of files, preparation and filing of applications, preparation and filing of Office Action responses, ITU-related documents (e.g., Statements of Use, Extension requests) and Post Registration documents (e.g., Sections 8 & 15 Affidavits, renewals)
• Overseeing filing and maintenance of international trademark applications and registrations, including maintenance of files, reviewing correspondence from foreign counsel and drafting responses to same; obtaining and providing foreign counsel with information/documentation necessary to prosecute/maintain trademark applications and registrations
• Preparing Assignments of trademark registrations and applications and filing same with PTO Assignment Branch
• Investigating possible infringement; Drafting cease and desist letters
• Demonstrating effective verbal and written communication with clients, outside vendors, and other parties

The IP Paralegal should have knowledge of, and familiarity with, trademark laws and procedures worldwide; experience with all aspects of USPTO trademark work (prosecution, maintenance and renewals) as well as TTAB proceedings (oppositions, cancellations). The IP Paralegal should also have proficient knowledge of internal software applications, such as word processing, internet searching skills, spreadsheets and databases. The successful candidate will have knowledge of MS Office applications, specifically MS Word, MS Excel and MS Outlook; as well as knowledge of Pattsy, Saegis, Corsearch, DerwentInnovation, Lexis TotalPatent, Lexis/Nexis, Westlaw and other informational databases. The IP Paralegal will have well-developed and professional interpersonal skills; ability to interact effectively with people at all organizational levels of the Firm; will accurately interpret and understand legal concepts and procedures as they relate to practice areas; the ability to work independently and in a team environment with a customer service focus; strong organizational skills; and the ability to multi-task in a pressured environment.

The successful IP Paralegal will have a bachelor’s degree or paralegal certificate from an ABA-approved program, as well as a minimum of (2) years of related law firm experience, preferably three (3) years of trademark Paralegal experience but all strong candidates will be considered.

Qualified candidates will have the ability to work flexible hours. Occasional travel may be required.