Litigation Paralegal-Intellectual Property

New York, NY

Summary

The position requested involves a paralegal that can apply a wealth of Trademark and Copyright Litigation experience to the assignments at hand and any future assignments that will arise as the practice group expands with the addition of new cases and new associates. In addition to the requisite skills of a litigation paralegal this new Trademark and Copyright Litigation paralegal would also need to possess the following specialized skills:

General Duties 

Research and compile information pertaining to:

• National and international intellectual property rights;
• Procedural matters and case law;
• Unfair competition and copyright infringement actions.
• Compiling search results and summarizing into formats such as charts or spreadsheets for easy access and dissemination to the team. Prepare status summary reports for attorneys and clients.
• Knowledge of international filing practices and procedures.
• Knowledge of IP docket systems and recording of due dates including responses, renewals, oppositions, Section 8 and 15 affidavits, Patent Cooperation Treaty requirements and payments of patent annuities in foreign countries.
• Assisting with due diligence process including searching for patent, trademark and copyright status and ownership/assignment information.
• Tracking down patent file wrappers, trademark oppositions and other publically available IP related documents.
• Familiarity with special IP related trade publications.
• Electronic Case Filing (ECF) Experience.
• Serving as a resource to attorneys with questions regarding IP registration and portfolios. 

Trademarks

• Experience with United States Trademark Office (USPTO) records, including the Trademark Electronic System (TESS), Trademark Status and Document Retrieval (TSDR) and the Electronic System for Trademark Trial and Appeals (ESTTA).
• Ability to conduct online trademark searches and investigations of third party marks.
• Experience filing motions electronically using the ESTTA database.
• Experience drafting and responding to cease and desist letters.
• Knowledge of office actions issued by the USPTO with the ability to summarize issues and experience in assisting in the preparation and filing of responses.
• Experience with and knowledge of process for filing trademark applications, statements of use, extensions of time, Sections 8 & 15 declarations, and other filings.
• Experience with and knowledge of Trademark Trial and Appeal Board procedures, deadlines and filings.
• Knowledge of procedures for enforcing client’s trademarks against potential infringements.
• Ability to search and analyze Trademark clearance and brand protection services.
• Knowledge of filing requirements for specimens of use and experience reviewing client products, advertising and packaging to ensure proper protection.
• Knowledge of procedure for maintaining foreign trademarks, which includes corresponding directly with foreign associates and instructing them to search trademarks and to file applications, renewals, affidavits of use and oppositions.
• Knowledge of legalizations and certifications for filing Powers of Attorney for trademark renewals, applications and registration certificates.
• Experience with client communications, including providing and maintaining accurate charts of client prosecution matters.
• Function as a knowledge base for attorneys and other team members to consult regarding practices and procedures for both international and national matters. 

Copyrights

• Experience with searching copyright registrations using the United States Copyright Office (USCO) online database.
• Experience with filing copyright applications using the Electronic Copyright Office (eCO) database.
• Experience with federal copyright litigation, including drafting and filing of motions, declarations, maintaining docket filings, and related tasks.
• Ability to create and maintain reports and spreadsheets related to compositions at issue.
• Knowledge of the Bob Goodlatte Music Modernization Act.

Specific Technical Skills

• Strong knowledge of MS Word, Excel, PowerPoint, and Internet applicant search expertise.

Performance Traits

• Must be flexible to work overtime.
• Excellent interpersonal skills.
• Possess a high degree of professionalism and confidentiality.
• Strong organizational skills with extreme focus to detail.
• Ability to take initiative and manage multiple tasks simultaneously.
• Excellent verbal and written communication skills.

Education/Training/Certifications          

• Bachelor’s degree required.
• Paralegal certification preferred.

Minimum Years of Experience Required

• 3-5 years of IP paralegal experience required.