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Title : IP Paralegal

Location : Pennsylvania - Pittsburgh
Refer to Job # UNZB715846

Business is very brisk at this large, international full-service law firm that is one of the oldest and most prestigious firms in the Pacific Northwest. Their practice includes corporate, litigation, real estate, intellectual property, legislative, and other types of law. It's clients include some of the largest corporations from around the region and the globe. The firm has a strong commitment to diversity, and its attorneys enjoy a flexible, exciting environment where they can choose the specific types of work that they enjoy. All attorneys are given meaningful, interesting assignments and client contact, as well as the training and mentoring they need to enhance their skills. Relationships between associates and partners are generally good, and the firm encourages pro bono work. Billable hours requirements are reasonable, and market compensation is paid.
IP Paralegal Responsibilities: Prepare all documents for filing; review new patent and trademark applications (including CONs, DIVs and CIPs); prepare filing materials such as utility and fee transmittals, application data sheets and requests for non-publication (US/foreign). Upload and file all filing, application, amendment, issuance, assignment, maintenance and other materials. Prepare IDSs for submission to USPTO including preparation and maintenance of extensive schedules to assist in the cross-citation of references among related applications, determine art to be cited; obtain foreign references, publications, translations of non-English. Effect national phase entry of PCT applications, and prepare and file continuing applications. Manage interaction with foreign associates regarding the client s intellectual property, including review of correspondence from foreign associate or client, determine course of action, and prepare instruction letters and other responses where appropriate for foreign associates. Search USPTO for status of pending applications, issued patents/registered trademarks, patent re-examinations, maintenance fee payments, details to calculate patent expiration, first office action prediction, and assignments. Utilize Internet-based research sources including USPTO, EPO, WIPO, US Copyright Office Courtlink, CSC, Delphion, DialogClassic, INPADOC, LexisNexis, PACER, Questel; SAEGIS. Relative to patents and trademarks, perform advanced on-line searches of industry databases and general legal research as well as conduct due diligence and summarize findings, update research as needed. Review docket for deadlines, understand docket and deadlines and action needed on each file; inform responsible lawyer(s) of deadlines, file status inquiries to determine status of application. Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding Letters Patent. Process payment of Issue Fees. Track and perfect chain of title in U.S. patents. File and assist in prosecution of design applications; conduct litigation-based searches including dockets, pleadings, case law and citations-summarizes findings. Effect portfolio transfers. Qualifications: An undergraduate degree and must possess strong organizational, communication, writing and research skills. Advanced knowledge and understanding of rules and procedures of the USPTO, PCT and other international governing bodies. Experience in on-line IP database searching (especially USPTO patent databases). Previous and direct use of docketing software is a plus. Effective written and oral communication skills. High attention to detail. Excellent organizational skills, including the ability to work productively under pressure, manage multiple priorities, track extensive deadlines. Proficiency with technology including Microsoft office suite applications, specifically Word, Excel, Adobe.

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