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Title : Ip Paralegal

Location : California - Los Angeles
Refer to Job # DYWO765593

IP Paralegal The candidate will assist attorneys with all aspects of patent and trademark prosecution, reporting, maintenance, renewals, and docketing. Will also assist with intellectual property litigation. Will be responsible for preparing trademark, patent, and copyright applications, assisting with intellectual property litigation, and conducting related intellectual property research. Will work with attorneys to prepare and file applications with the USPTO, including electronic filing of all USPTO documents. Work with attorneys to ensure timely responses to Office Actions, payment of issue fees, and submission of formal drawings. Monitor and docket deadlines for pending patent applications and granted patents. Prepare and file Information Disclosure Statements. Monitor status and work with attorneys/clients regarding foreign filing opportunities, including PCT and other foreign applications. Report information to clients regarding communications from the USPTO and status of pending patent applications and granted patents. Execute US and international searches. Review granted patent documents to determine maintenance requirements and calculate terms. Will file all applications, drawings, and documents electronically, including confirming applications and drawings to PCT formatting requirements, preparing request forms, selecting the desired International Search Authority, and ensuring correct applicant, inventor and priority information. Monitor PCT timeline, including ensuring the timely filing of Demand and national/regional entry. Work with attorneys and clients to evaluate findings set forth in International Preliminary Examination Reports and select countries for national (regional) entry. Work with attorneys regarding International Search Reports, including the relevance of cited art, strategies for possible Article 19 and/or Article 34 amendments, and ensuring any cited art is disclosed in corresponding national cases. Review and maintain a docket for timely reporting of communications to the client and foreign associates. Keep attorneys apprised of upcoming deadlines and coordinate with attorneys to keep clients updated regarding the same. Assist with preparing cost estimates related to the selections of countries for national (regional) entry. Execute availability/preliminary screening searches on trademark databases, including available international databases. Conduct on-line Internet searching for possible conflicting domain names or other internet usage. Work with attorneys and clients to determine correct mark, including design image, if any, and proper classification of goods or services. Assist with preparing and filing trademark/service mark applications, either use-based or intent-to-use via electronic filing. Monitor status and work with attorneys and clients regarding possible priority-based foreign applications. Review office actions issued by the USPTO and assist with preparing draft responses. Determine acceptability of specimens evidencing use and assist with preparing and filing Amendments to Allege Use or Statement of Use. Review Certificates of Registration for accuracy and determine dates for evidence of continued use/incontestability and renewal. Assist with preparing and filing Section 8 and 15 Affidavits and Renewal Applications. Assist with preparing and filing Trademark and/or Trade Name Registration forms (State). Prepare status reports. Review and maintain a docket for timely reporting of communications to the client and foreign associates. Keep attorneys apprised of upcoming deadlines and coordinate with attorneys to keep clients updated regarding the same. Assist with preparing correspondence to foreign associates, ensuring transmission of all required documents, and work with foreign associates through compliance with local required filing formalities, including legalization of documents if necessary. Monitor status to ensure timely filing of request for examination and dates for payment of requisite maintenance fees in patent cases. Review granted patent documents to determine maintenance requirements and calculate term. Work with attorneys and clients regarding validation procedure after grant of European patents. Work with attorneys upon receipt of office actions issued by foreign offices to ensure proper instructions and timely responses in both patent and trademark cases. Review Certificates of Registration to determine renewal dates and use requirements in trademark cases. Work with attorneys and clients to determine type of copyright work, correct authorship, and copyright claimant. Complete electronic copyright registration forms, including Request for Special Handling, if appropriate. The candidate should preferably have Bachelor's Degree. Paralegal Certificate from an ABA-approved program required. Should have 3+ years of experience as an Intellectual Property Paralegal. Must possess strong technical skills and have a good working knowledge of Microsoft Word, Excel, Outlook, PowerPoint, and programs like FileSite/iManage and Elite. Solid command of the English language including excellent spelling, grammar, punctuation, form and style, strong communication skills with the ability to express self effectively, both orally and in writing required. Interpersonal skills with the ability to establish effective working relationships with colleagues needed. Familiarity with legal terminology pertinent to the areas of assignment. Should be able to prioritize and multitask effectively, able to work as a team as well as independently. Must have knowledge of USPTO rules and procedures.

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