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Location : New York - Long Island
Refer to Job # ZBOS710315
Paralegal - Intellectual Property The candidate supports the Intellectual Property Client Service Group s activities with respect to trademark, patent, and copyright prosecution work. Monitors and maintains U.S. and foreign patent and trademark docketing database (Pattsy) as well as responsibility for internal docketing, and generating reports and reminders for firm attorneys and firm clients. Enters and tracks due dates into Pattsy and monitors actions due. Reviews USPTO and outside counsel correspondence, dockets new cases and new due dates. Generates docket reports and coordinates with attorneys and staff to meet all due dates. Communicates with USPTO, attorneys, paralegals, liaisons, foreign associates and staff about docketing and prosecution matters. Prepares, files and prosecutes domestic trademark applications, including drafting applicable documents. Prepares non-substantive responses to Office Actions, Statements of Use/Extensions of Time, and preparing/ filing trademark assignments and security interests. Communicates with clients in respect of ongoing activity in US and international trademark matters. Communicates with foreign associates with respect to international trademark applications and registrations/renewals. Extracts relevant information from correspondence and official Patent and Trademark Office databases. Provides information and recommendations on various matters under the oversight of lawyer(s). Presents information effectively to lawyers and clients and responds to questions. Tracks and records time in DTE system. Contributes to the overall team effort by working with all members and levels of personnel in various locations throughout the Firm. Follows the ethical requirements as set forth in the Rules of Professional Conduct of the state.
The candidate must have a BA/BS degree or equivalent or Paralegal certificate. Should have 8+ years of trademark and patent docketing experience using Pattsy. Should have in-depth knowledge of patent and trademark docketing using Pattsy, U.S. and international patent docketing procedures, U.S. and international patent and trademark prosecution and registration procedures. Must have proven proficiency with Microsoft Office products, and PDF Pro. Must have the ability to organize large amounts of data, both hardcopy and electronic, into an easily retrievable system.
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