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Location : California - San Francisco
Refer to Job # WQTS801157
Senior Paralegal The candidate will support the Intellectual Property & Technology (IPT) group by assisting with all facets of the trademark prosecution process. The position works autonomously and has the ability to establish and maintain good working relationships with clients and counsel. The Senior Paralegal/Case Manager is responsible for conducting, reviewing and analyzing trademark searches in U.S. and International databases; reviewing, analyzing, and reporting on comprehensive trademark searches from outside trademark search vendors; preparing and assisting in the prosecution of trademark applications, and performing other tasks as necessary relating to prosecution of global trademark portfolios for clients. Responsibilities also include copyright filings, filing of assignments and security interests for patent, trademarks and copyrights, and performing trademark, copyright and patent searches relating to due diligence projects. Handles all aspects of U.S. trademark prosecution and maintenance, including: preparing, filing and docketing trademark applications; preparing responses to USPTO office actions; preparing and filing renewals and declarations of use, collecting evidence of use for prosecution, maintenance and conflict matters, drafting client correspondence, recording assignments and other documents, copyright searching and filing. Handles all aspects of US copyright registration filings as well as recording of assignments and security interests for copyrights, patents and trademarks. Analyzes data related to cases and contacts public agencies to examine public records. Reviews client documents, organizes document collections, and performs legal and factual research. Assists attorneys with full trademark searches by compiling trademark search results, and summarizing them into formats such as charts or spreadsheets. Assists attorneys with full patent and copyright searches for purposes of corporate due diligence. Prepares status summary reports on various client matters for attorneys and clients. Performs other duties and responsibilities as assigned. Minimum of 10 years experience in performing traditional paralegal functions, with a minimum of three years IP/Trademark experience. Prior experience with trademark enforcement, trademark litigation, and/or trademark prosecution is preferred. Experience with copyright and patent searches and filings is a plus. Proficiency in the use of computerized legal research and document retention databases for performance of fact and legal research and effective management of complex evidence and case files. Knowledge of IP docket systems and ability to coordinate with Docketing team for recording of due dates for all trademark portfolio matters. Proficient with Microsoft Office suite applications including Outlook, Excel and Word. Must have excellent organizational and written and verbal communication skills. Ability to work independently as well as in a team environment with attorneys and other staff members. A bachelor's degree is preferred. A paralegal certificate from an ABA-approved program is required.
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