Paralegal

Paralegal

Requirements

• Proficiency with U.S. and international trademark law, including inter-partes matters.
• Proficiency in conducting trademark clearance searches and managing trademark watch notices.
• Strong interpersonal skills necessary to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.
• Ability to manage and work independently in a hybrid, and in-office setting.
• Ability to work effectively both independently and with teams to promote consistent and efficient workflow processes.
• Ability to work under pressure while producing a high volume of information with attention to detail while producing an accurate work product.
• Willingness and ability to accept changing assignments and priorities.
• Ability to compose, proofread and edit (e.g., punctuation, grammar, spelling) routine memorandums and correspondence.
• Ability to identify and analyze complex issues and problems and to recommend and implement solutions.
• Strong working knowledge to utilize various online electronic filings with government agencies and to maintain worksheets for clients.
• Proficient in Microsoft Office Products (Excel, Outlook, PowerPoint, Word).
• Familiarity with SharePoint.
• Familiarity with Anaqua.
• Strong organizational and administrative skills.
• Ability to search various websites to locate information in order to communicate with clients or maintain accurate information in the firm’s various software applications associated with IP.
• Ability to provide quality client service to both internal and external clients effectively and professionally.

Responsibilities

• Ensure policies and procedures are being followed on a day-to-day basis in relation to assigned duties, including client special instructions and in accordance with established firm guidelines.
• Monitor deadlines associated with the U.S. and international dockets, including providing follow-up with attorneys, clients, and management in order to provide adequate time to respond.
• Review daily docket reports in accordance with established firm guidelines and correspond with the IP docket department regarding same.
• Prepare and file trademark applications, statements of use, extensions of time, amendments to allege use, Section 8 & 15 declarations, and other filings with the USPTO under attorney supervision.
• Prepare and manage the recordation of assignments and name changes in the U.S. and internationally.
• Receive and act upon client instructions, including confirmation and/or draft response to client inquiries related to US, WIPO and foreign applications.
• Create and maintain electronic worksheets to assist attorneys in managing client requirements as needed.
• Provide support for Trademark Trial and Appeal Board proceedings and appeals.
• Review and analyze trademark watch notices and conduct routine trademark clearance searches.
• Review advertising and marketing materials for proper trademark usage and accuracy of marketing claims and sufficiency of corresponding substantiation.
• Maintain the firm’s official file utilizing the document management system.
• Track and record client-billable time as required meeting minimum billable hour requirements.
• Responsible for maintaining and prioritizing work on a daily basis and communicating if unable to meet daily responsibilities.
• Demonstrate good teamwork skills within and among practice groups, offices, and firm to facilitate efficient delivery of legal services.
• Participate in the training and professional development of other paralegals in routine practice elements.
• Utilize USPTO and other related government agency electronic resources effectively.
• Willingness and flexibility to work closely with all attorneys and staff as needed.
• Provide back-up support to other team members as needed.
• Manage workflow and effectively communicate with IP Service Assistant team.

Preferred Qualifications

• Paralegal Certificate from an ABA recognized program preferred.
• Minimum five (5) years of progressive trademark prosecution experience, including docket management, application filings and prosecution to gain an understanding to provide support and planning that will ensure a high quality and accurate work product.
• Trademark pharmaceutical experience beneficial.