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Title : Trademark/patent Paralegal

Location : New York - Long Island
Refer to Job # QXQR846088

Trademark/Patent Paralegal The candidate will conduct domestic and international trademark searches, including high-volume trademark screening and full searches, as well as evaluating search results and opinions. Coordinate investigations. Prepare and files trademark applications and instructs local counsel to initiate new filings; Communicate with foreign associates. Manage prosecution of applications through registration, including handling certain office actions and other issues encountered during prosecution. Prepare and record simple assignments; prepare and record documents affecting the chain of title. Prepare and file WIPO related documents. Assist with trademark docketing. Assist with monitoring, reviewing and maintaining renewal and maintenance dockets. Assist with trademark enforcement program: conduct preliminary analysis, requests and reviews opinions of outside counsel, and makes initial recommendations regarding potential trademark infringement matters. Assist with domain name registrations in addition to coordinating with key stakeholders for the maintenance of the domain name portfolio. Provide assistance in connection with Internet-related issues, including initial analysis of potential online infringement matters. Provide support for client acquisition and divestitures, including due diligence, preparation of schedules, and initial drafts of related agreements. Develop proactive relationships with firm clients to support and protect their trademark portfolios and other IP Rights. Provide counseling and education to firm clients. Support and develop Trademark department processes and initiatives to increase efficiencies, improve workflow and collaboration within the department and with client groups. Keep abreast of trademark practice rules and regulations worldwide. Review and approve invoices for trademark-related work through electronic billing system. Create all documents necessary to file U.S. and foreign utility and design patent applications necessary to file same, including application data sheets, priority claims, inventor declarations and inventor assignments, correspond with inventors and clients to obtain executed documents. Docket and track the status of all pending U.S. and foreign patent applications. Review all issued patent certificates, docket and sent to client. Be responsible for docketing and tracking U.S. maintenance fees, foreign annuities and renewals. Originate all correspondence with clients and foreign associates. Pay U.S. maintenance fees and authorize foreign associates to pay annuities and renewals. Communicate with the USPTO to obtain information to deal with and resolve issues that arise. Correspond with foreign associates regarding incoming patent applications and filing same in the USPTO. Instruct foreign associates as to the filing of foreign patent applications based upon prior files U.S. applications. Review, track and docket all U.S. and foreign office actions. Perform due diligence patent investigations to confirm status, ownership and encumbrances. Communicate with draftsman with respect drawings for U.S. and foreign patent applications. Respond to clients as to the status of patent applications and other inquiries. Bachelor's degree or Paralegal certificate with 5+ years of trademark work experience or 5+ years of trademark work experience in a law firm, in-house legal department, consulting firm or comparable experience elsewhere is required. Experience in clearance and searching, and knowledge of international and domestic laws relating to prosecution, administrative proceedings and conflicts is required.

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