Hanley, Flight & Zimmerman, LLC (HFZ), a boutique intellectual property law firm, is looking for an experienced Foreign Filing Paralegal with five (5+) years of experience to lead its Foreign Filing practice.
HFZ’s Foreign Filing Paralegal will be responsible for overseeing the firm’s Foreign Filing docket, preparing and filing PCT applications and US national phase filings; timely seeking foreign filing licenses, and instructing overseas attorneys on PCT nationalizations and Paris Convention filings, working statements etc.
Skills and Experience Required:
Drafting Patent Cooperation Treaty forms and filing all stages of PCT applications.
Monitoring the firm’s Foreign Filing docket and communications with foreign attorneys and in-house teams to proactively make sure all deadlines are met.
Acquiring certified documents from the USPTO as needed.
Ability to work independently and meet deadlines.
Strong written and verbal communication skills.
Education and Experience:
Minimum 5 years of PCT and national patent filing prosecution experience.
Proficient with Microsoft Office Suite.
Knowledge of foreign patents, PAIR and PCT.
$85,000 per year plus benefits including:
Liberal remote work policy
Health, disability, and life insurance.
Vision and dental insurance available.
Please apply by submitting your resume and academic transcripts along with a cover letter to: https://hfzlaw.com/recruit (Foreign Filing Paralegal position) ATTN: Bill O’Connor, Recruitment Manager.
Additional Info Employer Type: Law Firm Job Location: Chicago, IL
Michael Best & Friedrich LLP is seeking an Intellectual Property (IP) Administrator for our Madison, Milwaukee, Waukesha (WI) or Chicago (IL) offices. This role will be responsible for managing the day to day prosecution of domestic and foreign trademark and copyright applications. This includes all aspects of trademark searching, clearance, prosecution, maintenance, and enforcement.
Duties & Responsibilities:
Complete electronic filings in the USPTO, including the TTAB, and WIPO.
Oversee all aspects of U.S. and foreign trademark prosecution, oppositions, and cancellations.
Analyze trademark watch notices and manage watch services.
Conduct, review and analyze trademark searches.
Manage IP portfolio, including international trademark portfolios.
Perform trademark clearance, registration, maintenance, and due diligence.
Bachelor’s degree or minimum of three years of work experience, or equivalent combination of education and work experience.
Proficient with relevant IP databases including USPTO and WIPO websites and Corsearch for searching and trademark watching.
Familiarity with the Trademark Manual of Examination (TMEP).
Experience with trademark docketing software, including docketing, running searches and preparing portfolio reports.
Attention to detail and organizational skills as well as the ability to effectively prioritize multiple projects while managing critical deadlines.
Self-motivated while working in a collaborative team environment.
Excellent oral and written communication skills.
Highly proficient in Microsoft Office Suite programs (Word, Excel, PowerPoint, Outlook).
Knowledge of Anaqua, Elite and/or iManage (or similar document management system) is a plus.
Valid authorization to work in the US.
To be considered for this position, please submit an application via our online portal.
Global Graphene Group, a small corporation, is seeking a Patent Paralegal to work in Dayton, OH. The Patent Paralegal will be responsible for patent prosecution and will use the PTO's EFS system, including preparing and filing patent applications and related documents as well as all other documents typically filed in the life cycle of a patent. Additional responsibilities include:
Weaver Austin Villeneuve & Sampson LLP, a specialty patent prosecution firm, is seeking to add to our talented staff. WAVS IP offers a pleasant, collegial work environment with competitive salaries (full-time positions offer a full complement of benefits). Remote work arrangements are possible.
The ideal candidate will have 1-2 years of US and/or Foreign patent prosecution experience. Job duties involve electronic filing and processing of email communications, which requires detailed review of communications between multiple parties regarding initial patent filings, prosecution, allowance and grant. Candidates must be able to navigate and adhere to the firm’s case management system, consult our IP database, obtain patent references, search foreign patent office websites, and be willing to complete other projects as needed to support our foreign paralegals. Candidates must be able to work well with foreign associates, clients, patent practitioners, and firm support staff. Working knowledge of PCT and foreign patent processes is required. Experience with preparation of patent documents and correspondence is desired. IP docketing experience is a plus+.
Every position at WAVS requires diligent, responsive individuals who possess inordinate attention to detail, computer proficiencies (Outlook, Word, Acrobat, Excel, varying practice tools), and the abilities to communicate effectively verbally and in writing, and perform well working both as part of a team and with limited supervision. Candidates must be able to prioritize tasks, manage workload effectively, and complete work in a timely, efficient and thorough manner, while maintaining focus and limiting distractions. Applicants of varying levels of experience but having the requisite skills and abilities will be considered. BA/BS degree or equivalent experience required. Cover letter with resume is mandatory.
Holland & Hart LLP is seeking an IP specialist. The Intellectual Property Specialist supports the growing, innovative, electronics-focused patent practice. This supportive position is responsible for patent-related tasks, helping to prepare and prosecute patents for some of the largest and most innovative technology companies in the world. This role joins a dynamic, collaborative environment focused on excellence and work/life balance and specifically supports the Electrical Engineering IP practice.
Supports patent attorneys in docket and practice management
Performs tasks associated with the preparation and prosecution of patent applications
Manages and performs range of duties related to an internal electronic file system
Generates templates for patent applications, and responses to various Office Actions (including but not limited to: a Filing Receipt, Notice to File Missing Parts, Response to Office Action, Notice of Publication, Notice of Allowance, Issue Notification; and Letters Patent) as they relate to correspondence/filing with USPTO, PCT, and foreign associates
Prepares additional templates for various legal documents (Declaration, Powers of Attorney, Assignments)
Reviews formalities of filed patent documents to ensure proper form, including Filing Receipts, Declarations, Recordings, Information Disclosure Statements, allowed patents ready to issue, etc.)
Performs electronic filings at the USPTO
Manages new client intake and opening of matters
Maintains proficiency in required technologies such as Microsoft Office, Adobe Acrobat, iManage, USPTO products, Intapp, etc.
Performs other functions as assigned
Job Qualifications (Education, Experience and Certification):
All career-focused, interested candidates able to demonstrate the following will be considered:
Strong work ethic and attention to detail
Excels within a dynamic, positive, professional, team-oriented culture
Quickly learns and comprehends complex concepts and processes
Thinks critically to understand how each task fits into a broader workflow
Works efficiently, using available technology and striving to make tasks easier and more efficient.
Requires superior proofreading
Requires superior oral and written communication
Requires proficiency in Microsoft Office suite products (Outlook, Word, Excel, and PowerPoint, Visio is a plus), Adobe Acrobat, iManage, USPTO products, Intapp, etc
A Bachelor’s degree or 3-5 years experience in a professional environment required.
Minimum 3+ years patent prosecution experience required
Knowledge of USPTO systems and processes
Knowledge of patent preparation and prosecution
Functional/Technical Expertise – Understands necessary information, processes and procedures to carry out job responsibilities.
Customer Orientation – Views the firm through the eyes of the customer and goes out of their way to anticipate and meet customer needs.
Communication – Recognizes the essential value of continuous information exchange.
Team Player – Team oriented; maintains composure and is adaptable to the changing needs of the team.
Results Orientation – Maintains appropriate focus on outcomes and accomplishments.
Change Agility – Effectively adjusts habits, procedures, and behavior as needed.
Business Thinking – Understands the bigger picture and how individual actions fit in.
High Standards – Takes pride in putting forth high-quality work product.
Initiative – Proactively seeks ways to contribute to and enhance the success of the team.
While performing the duties of this position, the employee must have the ability to sit, stand and/or walk for extended periods of time; manipulate (lift, carry, move) weights of at least ten (10) pounds; have repetitive wrist/hand/finger movement to work on a computer and/or related office equipment; speak clearly and concisely so listeners can understand; and regularly understand the speech of another person.
The physical demands described here are representative of those that must be met by this position to successfully perform the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
Professional office atmosphere. Sedentary work that primarily involves sitting or standing for prolonged periods. Position may require occasional off-hour meetings and events.
The work environment characteristics described here are representative of those this position may encounter while performing the essential functions of this job. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
Note: This job description is intended to convey information essential to understanding the scope of the job and the general nature and level of work performed by job holders within this job. However, this job description is not intended to be an exhaustive list of qualifications, skills, efforts, duties, responsibilities or working conditions associated with the position.
Sheridan Ross P.C. is seeking a Patent Prosecution Legal Assistant with 3 or more years of experience. A Patent Prosecution Legal Assistant, under the supervision and direction of Attorneys, helps to manage and organize materials and information relating to the drafting, filing and prosecution of patent applications. A Legal Assistant is an essential part of the team of people providing patent prosecution services to our clients and their duties will frequently include organizational, administrative and other clerical tasks that aid in providing clear and consistent communication to our clients.
Job duties include:
Prepare documents for patent applications and complete prosecution through issuance as assigned, including assist Attorneys with initial drafting of shell patent or trademark applications, draft and review correspondence including reporting letters, Responses to Office Actions, amendments, Notice of Allowance reviews, preparation and review of Information Disclosure Statements, providing instructions to foreign associates.
E-file relevant documents with US Patent & Trademark Office and state and federal courts as assigned.
Compile and organize case materials and fill in missing document gaps for current assigned cases; compile relevant documents in databases and network drives to maintain an accessible case file; actively maintain paper and/or electronic files with all relevant materials.
Employ various Firm resources, e.g. PATTSY, and shared network drives.
Facilitate communication between Attorneys and work directly with Attorneys in coordinating and executing their requests.
Serve as a point of contact for client, when necessary, to update on case status, etc.
Other administrative duties (e.g., maintain attorney calendar) as assigned.
Qualifications and requirements:
The ideal Legal Assistant candidate is a college graduate (or equivalent experience) with experience in the legal profession and a strong interest in IP law. Excellent oral and written communication skills are necessary, as is the ability to interact professionally with staff, attorneys, legal assistants, clients and vendors. The successful candidate must be able to work independently as well as with a team, have an acute attention to detail and be able to multi-task and prioritize while working in a deadline-driven environment. Strong technical skills are required, particularly Microsoft Word, Excel, Outlook, Adobe Acrobat, and a Document Management System; knowledge of Carpe Diem, Westlaw, Relativity, Campulaw, and Sharepoint is a plus. Occasional overtime availability is required.
Hauptman Ham, LLP, an intellectual property law firm located in Northern Virginia, seeks a Patent Legal Assistant who will support several growing IP practice groups. This Legal Assistant will handle patent prosecution with a focus on filing applications and information disclosure statements. The position requires a keen eye for detail, excellent organizational skills, the ability to prioritize workload, communicate well with other members of the team, anticipate needs and identify solutions to problems. This position will report to the Practice Manager and may be called upon to support other practice areas, as necessary.
Key Roles & Responsibilities
Duties may include but not limited to:
Review, process, and file new applications including National Phase, Continuation, Divisional, Continuation-in-Part, Utility, Provisional and Design.
Review and respond to client correspondence and preparation of formal documents including Declarations, Substitute Statements, Assignments, Powers of Attorney.
Review and process formalities including Official Filing Receipts, Notices of Publication, Missing Parts.
Prepare and file Information Disclosure Statements including determination of fee or certification requirements.
Preparation of reporting letters and invoices.
Associates level degree or above preferred.
Minimum two years of patent prosecution experience required. Experienced in working in Microsoft Office Suite. Solid work history preferred. Strong verbal and written communication skills required.
Understanding of the USPTO patent process required. Familiarity with PATTSY a plus.
Sheridan Ross P.C. is seeking a legal assistant with 5 or more years of heavy litigation practice, including experience in federal and appellate courts. Intellectual Property experience preferred, but not a requirement. This is an opportunity to perform paralegal-type tasks in addition to required, daily administrative tasks. The ideal candidate will have strong organizational and word processing skills, and be proficient at using standard software (Word, PowerPoint, Excel, time entry programs, etc.). Candidates should be well versed in electronically filing in federal court (e.g., using PACER) and have experience handling electronic and written document discovery as well as case docketing needs. Trial experience preferred.
Qualified candidates will be motivated self-starters with superb communication and writing skills, a commitment to excellence, a team player and an ability to thrive in a fast-paced environment. We offer a competitive compensation package and benefits and all assistants are assigned their own office.
Coordinate administration of US and foreign patent applications and other legal protection of UIUC technologies.
Work with OTM technology managers and UIUC inventors during the technology evaluation and patenting process, including: assisting in assembly of supporting data and documentation; reviewing patent search results; monitoring preparation and filing of patent applications, providing assistance in responding to patent office actions; and providing recommendations regarding US and foreign patent processes, costs, and alternatives.
Serve as a liaison between OTM, UIUC Legal Counsel, and outside patent counsel regarding the selection, engagement process and authorization/approval of expenditures for outside counsel.
Review and approve invoices.
Assist with drafting patent licenses and other intellectual property agreements.
Monitor actions and scheduled due dates for US and foreign patent process to ensure timely responses.
Manage inventorship, ownership, and assignment issues and decision-making.
Maintain and organize patent case files.
Keep abreast of changes in patent laws and procedures.
Work with patent counsel to manage patent costs.
Assist in the preparation of the patent budget.
Provide ongoing training and updates on patent subjects.
Review all correspondence with patent counsel and take appropriate actions as required.
Participate in the development of OTM infrastructure, policies, and procedures.
Oversee accuracy and completeness of database patent or patent-related records.
Prepare Excel reports as needed from database records on patent and patent-related matters.
Work with interns to improve searching and inventor interviewing processes, and provide mentoring for interns interested in patent law.
Prepare and file certain provisional patent applications.
Participate in campus outreach to educate faculty, students and staff on intellectual property related manners.
Manage activities of patent fellow.
Candidates must possess a bachelor’s degree in a physical science, engineering or related field with one to three years working knowledge of patent filing and prosecution procedures. Education must qualify the candidate to take the examination for registration to practice before the United States Patent and Trademark Office. Other requirements include: detail oriented with multi-tasking and strong prioritizing skills; excellent verbal and written communications skills to effectively interact with University and departmental officials/staff; ability to work in a fast-paced environment under multiple deadlines; strong interpersonal skills to effectively communicate with all levels of professionals within the organization; proven teamwork skills; ability to use independent judgment and make sound decisions regarding patents and intellectual property; proficiency with Microsoft Office suite applications; demonstrated teamwork skills in a highly complex business environment; ability to work independently and exercise good judgment and discretion.
Preferred qualifications: Advanced degree in a physical science, engineering or related field; registered patent practitioner; registered Patent Agent, if not registered, preferably has the background to meet the USPTO qualifications to become certified as a Patent Agent.
Contact For full consideration, candidates must apply and submit a letter of application, resume, and names/addresses/phone numbers of three professional references by June 12, 2019 to: https://uajobs.hr.uillinois.edu/.
Additional Info Employer Type: Education Job Location: Urbana, Illinois
Dowd Scheffel PLLC is seeking candidates for our Technical Legal Assistant position. It is an entry-level position for a recent college graduate, preferably with a technical undergraduate degree, who wants to work in a challenging, entrepreneurial environment and is interested in learning the legal profession with an eye towards law school.
Dowd Scheffel is a boutique law firm focusing on intellectual property (“IP”) law, as well as appellate and litigation matters. Our firm was started by two former Federal Circuit clerks, and we are seeking detail-oriented, highly motivated individuals interested in the intersection of technology and the law. Ideally, you have a technical/science degree and are eager to gain hands-on, practical legal experience working for a small law firm. The size of our firm dictates that our Technical Legal Assistant gets opportunities to work closely with attorneys on all aspects of projects, from the mundane to the intellectually complex. We require flexibility, agility, pro-active thinking, and a team-oriented approach—and a sense of humor. This is a great opportunity to get hands-on experience prior to making the plunge into law school.
You will primarily work with the two founding partners to assist them with all aspects of the firm’s practice. Our work includes the full range of IP law, from developing ideas with clients and protecting them, through enforcement and/or defense. Our client advocacy includes post-grant proceedings before the U.S. Patent and Trademark Office (“USPTO”), district court litigation, appeals, and Supreme Court advocacy.
We expect an entrepreneurial attitude and a desire to do whatever it takes to serve the clients’ interests. Candidates must have a strong work ethic, excellent written and oral communication skills, and a desire to strengthen relationships with clients and tackle legal challenges in a fast-paced environment. At the same time, we treat our Technical Legal Assistant as a colleague who is eager to learn from experienced attorneys.
Proofreading briefs, correspondence, and other written documents
Working with attorneys and legal assistants on client billable projects
Prepare, update, and maintain document indices, document and database management, basic research, organization of files, compilations of exhibits, proofreading and document retrieval from outside sources (Internet, libraries, courts and agencies)
Actively develop case management, cite-checking and research skills
Perform technical research and compile data as requested by attorneys
Assist with compilation and editing of briefs and applications to be submitted to courts and USPTO
Conduct patentability, right to use, and state-of-the-art patent searches
Manage and maintain case files and documents
Review, process and maintain client dockets for filing deadlines, including preparing reminders to attorneys and clients as needed
Assist with miscellaneous client-related projects
JOB SKILLS & QUALIFICATIONS:
Undergraduate degree, preferably in a science or engineering discipline preferred such as chemistry, biology, chemical engineering, biochemistry, and other related major
Preferred interest in the legal profession, although that is not a requirement
Ability to quickly learn and utilize various software tools and systems including Microsoft Office suite, Adobe, Westlaw, IP databases, and other online resources
Ability to handle multiple projects under pressure, meet deadlines, and be a strong team player
Strong attention to detail, excellent communication, organizational, and interpersonal skills
Experience with U.S. patents and the USPTO is preferable, but not required
Contact To apply, please email firstname.lastname@example.org. Applicants should submit a a resume, transcript(s), references, and any writing sample (if readily available).
Additional Info Employer Type: Law Firm Job Location: Washington, D.C.
Guntin & Gust is seeking highly skilled and productive IP Prosecution Paralegals and Patent Administrators.
As a Paralegal you will prepare written correspondence to clients and foreign counsel, perform docketing, manage client portfolios, generate filing documents, generate status reports and interact with clients concerning routine matters.
As a Patent Administrator you will work closely with the paralegals and the office manager to perform tasks associated with patent prosecution and administration. Such tasks may include, for example, entering prior art search results into our docketing system, downloading prior art references into our file system, generating draft outlines for the attorneys to use during client calls, entering items from timesheets into our billing system, and so on. The firm will provide training so that a patent administrator who is talented and motivated to learn new and challenging tasks can eventually grow into a paralegal position.
Each position requires a team player who works well independently and must be comfortable working with attorneys and staff at all levels. The position also requires initiative and flexibility in handling a variety of responsibilities.
We offer full-time employees full benefits paid by the firm and a competitive compensation package. Our firm is ideal for motivated and detail oriented candidates with a strong work ethic.
G&G is proud to be an equal opportunity workplace committed to creating a diverse, inclusive and respectful environment for our team.
A Bachelor’s Degree is required for either position. An accounting or business background is a plus. For Paralegal status, at least 2+ years of experience in IP practice at a law firm is required. For Patent Administrator status, 2+ years in a professional field is required - experience in IP practice would be considered a plus.
Muncy, Geissler, Olds & Lowe, P.C. seeks one (1) electrical and one (1) chemical patent attorney, patent agent, or technical advisor. Applicants must have 2 years of experience and an undergraduate degree in an applicable field, and preferably have an advanced degree such as a PhD, LLM, or JD.
The chemical position requires a background in chemical engineering, such as organic chemistry, inorganic chemistry, physical chemistry, solid-state chemistry, biomolecular chemistry, electrochemistry, and/or industrial chemistry. Specific areas of expertise could include semiconductors, organic and inorganic chemical products, pharmaceutical chemistry, materials science, compositions, catalysts, polymer chemistry, nanomaterials, etc. In addition, the ability to work on prosecution of mechanical patent applications would be beneficial.
The electrical position requires a background in electrical engineering. Specific areas of expertise could include electrical circuits, semiconductor devices, computers, data processing, transistors, active solid-state devices, control systems, electrical resistors, electrophotography, energy storage, radiant energy, nanotechnologies, optics, sensors, signal and image processing, etc.
Job duties include drafting applications, drafting claim amendments, preparing responses to office actions including addressing 35 USC 101, 112, 102, and 103 rejections, preparing appeal documents such as appeal briefs, reply briefs, etc., conducting interviews with Examiners, preparing opinions, reviewing outgoing client correspondence and USPTO submissions, complying with USPTO and MGIP rules and regulations, and other projects on an as-needed basis.
Contact Interested applicants must submit a cover letter and resume to email@example.com. We are located in the Washington D.C. metropolitan area. Applicant will preferably work on-site in our Fairfax office, but a remote position could be considered for the ideal candidate.
Additional Info Employer Type: Law Firm Job Location: Fairfax, Virginia
Muncy, Geissler, Olds & Lowe, P.C. provides client counseling in the field of intellectual property law, including the electrical, mechanical, chemical, biotechnology, electronic, wireless technology, design, and other fields. Most of our attorneys have science or technical degrees, and many have experience working in industry. In addition, a number of our attorneys worked as patent examiners at the United States Patent and Trademark Office before practicing law.
We provide legal services to large domestic and foreign corporations and to a wide range of mid-sized and start-up organizations. Our technical, business, and legal experience allows us to assist our clients in obtaining protection for their intellectual property in an efficient and cost-effective manner.
Oliff PLC, a full service IP Law firm with offices in Alexandria, Virginia, is seeking Patent Attorneys with a background in Electrical Engineering or Mechanical Engineering or closely related fields for the Alexandria office.
Background in optics a plus. Applicants should have at least two years of patent prosecution experience in a law firm, and patent drafting experience required. Positions involve all aspects of patent prosecution, with opportunities for increasing levels of responsibility and movement into other areas of our IP practice. Competitive salary and benefits package. Oliff PLC is an equal opportunity employer.
Contact To apply, please email firstname.lastname@example.org. Please submit a cover letter and resume for speedy consideration.
Additional Info Employer Type: Law Firm Job Location: Alexandria, Virginia
Sandvik Hyperion is seeking a Patent and Trademark Administrator / Paralegal. In this role, you will be part of the Legal team responsible for handling all aspects of the company’s Intellectual Property.
Responsibilities for the position will include:
Maintain docketing database for US and foreign patents and trademarks.
Review, monitor and attend to deadlines on IP/legal dockets.
Prepare filings and other IP/legal documents for the patent/trademark office.
Organize and help facilitate IP portfolio reviews and invention disclosures.
Maintain records of contracts, non-disclosure agreements and other legal documents.
Support IP and legal professionals in the company.
Participate and conduct training as and when required.
Create and foster a “Safety First” culture.
Conduct business in an ethical manner in compliance with the company’s policies.
The ideal candidate for this position will possess a BA/BS Degree (4 years relevant work experience will be considered in lieu of a degree) with at least two years of experience as a patent administrator. Paralegal certification is a plus. Specific skill sets required / desired for this position include:
Knowledge and understanding of Intellectual Property processes (US &PCT) is essential.
Exposure to systems handling trademarks is highly desirable.
Experience with database systems like CPI, FoundationIP etc. is desirable.
Experience with foreign filings is preferred, but not necessary.
Excellent written and verbal communication skills.
Strong computer skills with Microsoft Office, Adobe etc.
Self-motivated and adept at multi-tasking and prioritizing to meet strict deadlines.
Clairvolex Inc. is seeking a paralegal who will be primarily responsible for US patent paralegal functions for one or more customers. Quality control and direct, hands-on supervision of paralegal and administrative processes connected with filing and prosecuting patent applications until grant and post-grant maintenance of issued patents are key responsibilities. The candidate is expected to function as a mentor and a subject matter expert (SME) for a large team in the IPMS (Intellectual Property Management Solutions) business unit in India.
The role requires the candidate to have first-hand knowledge of patent prosecution at the USPTO, European Patent Office, though the PCT system of WIPO and other main national IP offices.
Acting as the primary customer contact for US based clients relative to paralegal, docketing and admin related projects will be an important aspect of this role. Client relationship management (CRM), in general, and oversight and management of billing and other administrative functions connected with CRM are functions the candidate will be expected to perform.
Paralegal will be responsible for the following:
a) 100% compliance of docket deadlines for one or more customers in relation to their patent applications portfolio.
b) Coordinating patent prosecution matters with the Paralegal Manager and the office of the Chief IP officer, Outside Counsels and in-house paralegals of the customers.
c) Overseeing paralegal, docketing and admin functions of IPMS team relative to the customers for which the senior paralegal is responsible for.
d) Subject matter oversight and supervision on matters concerning IDSes at the USPTO, first and supplementary IDSs, Citation Matrix, online IDS filing, patent watch, post allowance review, issued patent proofreading and such other paralegal and admin functions.
e) Import training on paralegal functions to the team in India.
f) Quality control of the work-products generated by the IPMS team, in general, and in particular in relation to the Customers for which the Senior Paralegal/Paralegal Manager has primary responsibility.
g) Train, coach and mentor un-trained or trainee paralegals and docketers.
h) Offer technical support, subject matter expertise, and solutioning support to sales and business development team
i) When required travel to client facilities for on-site reviews
j) When required attend potential customer presentations
k) Manage any special projects that Paralegal Manager or Clex Associate Vice President will require from time to time.
l) Attend client sales and marketing meetings, internal sales meetings, Clex strategy meetings when asked
m) Develop training materials and offer training to Clairvolex employees in relation to US paralegal functions
n) Participate in process building, process innovation, automation and similar activities directed at organization development.
o) Help in establishing the Clairvolex brand globally, may be asked to attend conferences, networking events, road-shows and also carry out regular visits to various potential and existing client facilities.
p) Provide every possible sales and marketing support including by offering online presentations, attending conference calls to render presentations on service lines and related processes, making client specific proposals, and obtaining client references (if and when specifically required).
Educational/professional qualifications: US Patent Paralegal. Should be qualified to function as a paralegal in the United States. Must possess a degree from a US university. Formal paralegal training is an added advantage.
Experience: Not less than 8 years as a paralegal at a US IP law firm, or the patent prosecution practice of a GP firm or at an in-house patent operation. Should have handled a large volume of patent preparation and prosecution matters.
Compensation: Commensurate to industry/law firm standards in the United States.
Position open as on date.
Reports to: Paralegal Manager
Reported by: The role may have functional reporting by members of the IPMS team in India.
Compensation: Commensurate with US industry standards. Standard benefits as per Company policy.
Business Domain: Intellectual Property Services and Solutions
Contact To apply, email Prerna Jain at: email@example.com. Please include a brief note on your Paralegal & Docketing experience.
Additional Info Employer Type: Small Corporation Job Location: Preferred Salt Lake City, Utah (or can be based anywhere in the U.S.)
Sherwin Williams is seeking an Intellectual Property/Patent Paralegal. The Intellectual Property/Patent Paralegal and Trademark position is responsible for providing legal and administrative support to in-house IP counsel. Legal support includes, without limitation, those tasks and responsibilities generally performed by IP paralegals in law firms and corporate legal departments.
Intellectual Property/Patent portfolio management, documentation, docketing and maintenance:
Acquire and maintain knowledge of company systems, tools and processes and procedures related to the documentation and protection of IP assets worldwide.
Collaborate with business units and corporate departments on the collection, preparation and filing of documents and related correspondence for IP assets.
Assist attorneys with IP filings, correspondence and docketing and daily practice management.
Possess and maintain knowledge of systems and procedures for protection of IP assets with government and administrative agencies worldwide.
Intellectual Property/Trademark Support:
Conduct computer searches to determine availability of proposed trademarks.
Prepare and file domestic trademark applications, affidavits and renewals.
Coordinate with foreign counsel to file foreign trademark applications, affidavits and renewals.
Prepare documents necessary to assert or defend trademark oppositions and cancellations.
Monitor U.S. publications for potential infringement of the Company’s trademarks.
Maintain electronic docketing system for trademark activities.
Docketing (including processing IP communications to and from outside/foreign counsel and the USPTO and docketing due dates as necessary), document preparation (including filing papers, draft responses, information disclosure statements), electronic filing, foreign and international IP filings (including corresponding with foreign associates), coordinating annuities, assisting attorneys with IP filing metrics, cost reduction projects and internal process efficiencies (including maintaining a best practices handbook for IP matters).
Administrative support may include, without limitation, the oversight and use of electronic matter management, docketing, billing and budgeting systems, the processing of new matters and the preparation of various reports and analyses.
High school diploma or equivalent
Paralegal Certification OR Associate Degree in Paralegal Studies
Bachelor’s Degree or equivalent experience
KNOWLEDGE & EXPERIENCE:
Minimum 1 year of IP legal or administrative experience
Familiarity and expertise with IP rules, regulations and procedures
More than five years of job-related experience.
Equal Opportunity Employer. All qualified candidates will receive consideration for employment and will not be discriminated against based on race, color, religion, sex,
sexual orientation, gender identify, national origin, protected veteran status, disability, age, pregnancy, genetic information, creed, citizenship status, marital status or any other consideration prohibited by law or contract.
Additional Info Employer Type: Large Corporation Job Location: Minneapolis, Minnesota
Founded in 1866, The Sherwin-Williams Company is a global leader in the manufacture, development, distribution, and sale of paints, coatings and related products to professional, industrial, commercial, and retail customers. The company manufactures products under well-known brands such as Sherwin-Williams®, Valspar®, HGTV HOME® by Sherwin-Williams, Dutch Boy®, Krylon®, Minwax®, Thompson’s® Water Seal®, Cabot® and many more. Sherwin-Williams® branded products are sold exclusively through a chain of more than 4,100 company-operated stores and facilities, while the company’s other brands are sold through leading mass merchandisers, home centers, independent paint dealers, hardware stores, automotive retailers, and industrial distributors. The company supplies a broad range of highly-engineered industrial and OEM coatings for wood and general industrial, coil, packaging, protective and marine, and transportation applications worldwide. Our 60,000 employees are diverse, innovative and passionate. With a variety of rewarding and challenging opportunities, Sherwin-Williams is a great place to find a career that takes you places.
• At least 5+ years of experience specifically in US/foreign trademark prosecution (search, filings and responses to office actions), domain name disputes, TTAB proceedings, trademark/patent litigation, licensing, and cease and desist letters.
• IP litigation experience in federal court - trademark, patent, copyright and/or corporate/contracts.
• Large law firm or IP boutique law firm experience required.
• Proven record of client development, must have at least a few portable clients as proof.
• At least one state bar license required.
Contact If you are interested in working with us, please send a cover letter and resume to firstname.lastname@example.org.
Additional Info Employer Type: Law Firm Job Location: Nationwide or telecommute
Based at Arkema’s Corporate Offices and R&D Center in King of Prussia, PA, the Paralegal focuses on the delivery of high-quality, cost-effective legal services to the Senior Vice President & General Counsel, Deputy General Counsel - Intellectual Property, and patent and trademark services to the Intellectual Property Attorneys, their clients and projects as assigned. This position requires knowledge of legal, patent and trademark procedures, processes and terminology. The Paralegal, who will be part of a two person team, must be proficient with the filing process for intellectual property matters, as well as other procedures in the Intellectual Property area. Part-time applicants will be considered.
Specific job activities include (but are not limited to):
Maintain patent and trademark databases and dockets for all pending and granted patents & trademarks, including constructing and generating reports requested by attorneys and business units.
Maintain Intellectual Property support: review and recommend activities, technologies or processes to enhance productivity and reduce costs.
Review, docket and assignment of correspondence from the U.S. and foreign patent offices worldwide. Deliver correspondences to appropriate attorney and make suggestions, when appropriate, on required response.
Correspond with foreign agents on various patent matters including responsibility of all patent annuities.
Review patent family files for examination reports and prior art citations. Provide foreign agents with results of the foregoing. Instruct Administrative Assistants to prepare and file supplemental information disclosure statements with the U.S. Patent Office based on foreign examination reports.
Review formal papers for new patent applications to be filed in U.S. Patent Office for completeness and accuracy.
Keep abreast of changes to patent and trademark laws to maintain knowledge of changes in the administrative procedures required.
Manage the docketing of invention disclosures.
Assist with divestiture, acquisition, name change and assignment matters as they relate to intellectual property.
Prepare the Intellectual Property Department Monthly Report.
Provide information to business units regarding budgeting of patents and trademarks.
Initiate and carry out the foreign filing process, including the filing of foreign patent applications. Correspond and follow-up with business unit management and foreign agents.
Handle the payment of annuities required to maintain Foreign Patent portfolios.
Monitor and request funding for USPTO Deposit Account.
Perform trademark searches and provide opinions on availability to the business units.
File new trademark applications worldwide and renew of existing registrations.
Prepare responses and documents required for responding to trademark office actions worldwide.
Review Trademark Gazettes and watch service notices for possible infringements of trademarks.
Assist outside counsel in trademark infringement proceedings.
Maintain the title of trademarks in the U.S. and worldwide, including recording name changes and assignments.
EDUCATION / EXPERIENCE REQUIRED:
Associate's degree with a minimum of 5 years of intellectual property paralegal experience OR High school diploma with a minimum of 10 years of intellectual property paralegal experience
Paralegal certificate preferred
Position requires an independent, self-motivated & flexible individual with strong communication skills and the ability to interface effectively with individuals at various levels, both within and outside the company
Proficiency in Word, Excel and Access, CaseTrack and other intellectual property management software
Business process knowledge: Legal, Business Administration and technology systems
Excellent grammar and spelling; accurate typing and proofreading; proven PC skills
Ability to act with discretion in handling confidential information
Jefferson IP Law, a fifteen patent lawyer/patent agent law firm, is seeking a full time paralegal/legal assistant to work directly with senior partners and international clients in intellectual property matters. College degree, outstanding academic achievement, attention to details, highly-organized, analytical skills, strong writing and proofreading skills, and the ability to work independently are a must. Experience is preferred but open to entry-level recent college graduates. Healthcare, 401(k), life insurance, STD, LTD insurance, fringe benefits, etc.
Contact To apply, email a cover letter and resume to Michael Shin at: email@example.com. Please do not respond if you are a third party.
Additional Info Employer Type: Law Firm Job Location: Washington, D.C.
Holland & Hart is seeking an IP Specialist (a hybrid patent prosecution paralegal/patent administrator) to support their dynamic, growing electronics-focused patent practice in Denver or Boulder, CO. We represent some of the largest and most innovative technology companies in the world, and have a unique, collaborative environment focused on excellence, teamwork, and work/life balance. We offer excellent salaries, outstanding benefits, and an energizing, professional work environment.
Supporting our patent attorneys in docket and practice management
Various tasks associated with the preparation and prosecution of patent applications including:
Manage and perform range of duties related to an internal electronic file system
Generate templates for patent applications, and responses to various Office Actions (including but not limited to: a Filing Receipt, Notice to File Missing Parts, Response to Office Action, Notice of Publication, Notice of Allowance, Issue Notification; and Letters Patent) as they relate to correspondence/filing with USPTO, PCT, and foreign associates
Prepare additional templates for various legal documents (Declaration, Powers of Attorney, Assignments)
Review formalities of filed patent documents to ensure proper form, including Filing Receipts, Declarations, Recordings, Information Disclosure Statements, allowed patents ready to issue, etc.)
Perform electronic filings at the USPTO
Managing new client intake and opening of matters
Performing a variety of patent support and administrative tasks as needed
Requirements: While paralegal and patent prosecution experience is preferred we are considering all career-focused, interested candidates who are able to demonstrate that he/she:
Has exceptional attention to detail and proofreading skills.
Is motivated to excel with a positive, team-oriented attitude.
Has a strong work ethic and prefers to keep busy.
Is able to quickly learn and comprehend complex and highly-technical concepts and processes.
Has superior oral and written communication skills.
Thinks critically to understand how each task fits into the broader workflow.
Always seeks to maximize the efficient use of technology available and strives to make tasks easier and more efficient.
Is proficient in the Microsoft Office suite of products (Outlook, Word, Excel, and PowerPoint are requirements, Visio is a plus).
Wants to be part of, and would thrive in, a dynamic, professional, growing patent practice.