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Title : Intellectual Property & Corporate Paralegal

Location : California - Carlsbad
Refer to Job # BKFO856922

Intellectual Property and Corporate Paralegal The candidate will assist an attorney in all aspects of trademark registration, maintenance, renewals, and administrative proceedings in the United States Patent and Trademark Office (USPTO) and trademark offices in other countries. Obtain information from clients relevant to trademark matters, conduct trademark clearance searches, analyze office actions and other official communications, write correspondence to clients about trademark matters, prepare and file prosecution forms, ensure timely compliance to all official deadlines, communicate with trademark colleagues in other countries for clients, and meet other responsibilities that arise in providing paralegal support for our clients' trademark matters. Trademark domestic and foreign docketing. Assist in intellectual property enforcement matters by preparing and filing various pleadings, motions, discovery responses, and similar documents. Review and coordinate attorneys' billings. Perform administrative support functions such as preparing agendas and reports for client meetings, maintaining spreadsheets of clients' intellectual property portfolios, coordinating and scheduling meetings, and maintaining the organization of internal files. Docketing new case filings, incoming office actions, and correspondence (PTO, PCT, and Foreign Associate) Advising attorney of issues relevant to managing the docket. Assisting in quality assurance review for patent filings by noting and referring to any errors or omissions observed during docketing duties. Monitoring and reporting on docket status, patent annuities, and maintenance fees. Assisting in checking and updating the status of patent cases with the United States Patent and Trademark Office and foreign patent offices when appropriate. Preparing documents for electronic filing with the USPTO. Performing preliminary knockout searches for potential trademarks. Coordinating and preparing materials for Reviews, timeouts sessions, and similar meetings. Supporting various agreements, including review of contract terms and conditions, drafting amendments, and updating drafts. Managing our current day-to-day IP prosecution matters and portfolio management responsibilities, particularly for trademarks, although patent experience is a plus. Collecting evidence of use, performing and analyzing trademark clearance searches, reviewing and analyzing trademark watch notices, obtaining signatures for declarations/ assignments/ applications/etc. and communicate with external counsel regarding prosecution needs and deadlines. Assisting with the creation/revision, documentation, delivery, and maintenance of intellectual property training, policies, and other projects. Assisting with IP litigation matters, including assisting with discovery, maintaining the file, and coordinating with outside counsel. Assisting with enforcement matters relating to client trademarks and domains (experience with UDRP/URS proceedings is a plus). Establish and maintain excellent communication and positive relationships with foreign associates to ensure successful outcomes concerning intellectual property matters. Other duties as assigned. Should have Bachelor's Degree or a Paralegal Certificate; 3 years of Intellectual Property Paralegal experience, including significant experience with trademark matters; experience with patent and copyright matters. Working knowledge of USPTO rules and electronic filing systems. Proficient in Microsoft Office Suite. Solid administrative skills and attention to detail.

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