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Title : Technology & Ip Transactions Paralegal

Location : New York - Long Island
Refer to Job # YJLL840655

Be a part of a highly successful, full-service law firm that counts among its esteemed clients many Fortune 250 firms. This firm has a reputation for treating associates exceedingly well. The branch office of a large international law firm, this firm's practice has consistently been strong in the litigation, corporate and tax fields; however, the firm also has made a definite commitment to intellectual property related work in the Los Angeles legal market. The Los Angeles branch has a full book of business involving some of the biggest movers and shakers on the national and international scene. An aggressive development track has associates achieving partner status in a very limited amount of time compared to other national firms of its stature. This firms is generally seeking the best and the brightest--meaning it is most willing to consider associates from top schools and firms.
Technology & IP Transactions Paralegal The candidate will understand the parameters of a transaction to conduct intellectual property ownership searches. Review information memoranda and target company websites for information regarding (i) the target company's business, (ii) the IP held or used by the target company, (iii) acquisitions and divestitures made by the target company, (iv) important markets and plans to expand into new markets. Draft instructions to the Kirkland library on conducting intellectual property searches. Develop an understanding of the capabilities and limitations of the patent, trademark, copyright, domain name, and litigation databases used by Kirkland's library. Conduct intellectual property searches on the SAEGIS trademark database, the USPTO and USCO website databases, and website databases maintained by foreign IP offices and WIPO. Maintain a good understanding of USPTO trademark and patent rules and procedures and US CO copyright office rules and procedures. Maintain a working knowledge of some foreign trademark and patent law. Review and analyze IP search reports, determining status and ownership of properties, presence of outstanding liens and chain of title issues. Review patent and trademark documents recorded at the USPTO and/or conduct web research to aid in analyzing and clarifying chain of title. Review continuity records for U.S. patents to determine how applications relate to one another. Review dockets and complaints for active patent and trademark litigation. Prepare intellectual property schedules based on an understanding of requirements of for various types of transactions. Draft memoranda summarizing types of searches conducted, and contents of an IP portfolio and issues relating thereto. Review and mark up target company IP disclosure schedules, note outstanding issues and draft footnotes when necessary. Resolve discrepancies between target company IP disclosures and K&E search results. Assist attorneys in preparing IP closing checklists. Draft short-form patent, design, trademark and copyright assignments, security interests, and security interest releases. Coordinate confirmatory assignments for foreign trademarks, patents and designs. Prepare filings to record changes in ownership for patents and trademarks at the USPTO and USCO. Occasionally, prepare and file Secretary of State forms for updating ownership of state trademark registrations and trade names. Coordinate Apostille certification or consulate legalization for foreign trademark and patent assignments and other title-affecting documents. Oversee and manage the process of recording assignments and other title-affecting documents for foreign patents and trademarks. Maintain a recordal status chart. Instruct and correspond with local counsel regarding recording assignments and other title-affecting documents. Bachelor's degree is preferred. Should have 2+ years of paralegal experience in intellectual property transactional or prosecution work. Paralegal Certificate is preferred.

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