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    Intellectual Property Paralegal - Chicago, United States - Adecco Permanent Recruitment

    Adecco Permanent Recruitment
    Adecco Permanent Recruitment Chicago, United States

    2 weeks ago

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    Legal
    Description

    IP Paralegal

    Job Summary:

    As an integral part of the team, the Intellectual Property (IP) Paralegal assists the IP attorneys with all aspects of our dynamic intellectual property practice. This includes counseling, clearance, licensing, prosecution, business transactions involving intellectual property, maintenance, enforcement and litigation. The IP Practice Group represents clients in a broad range of industries including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services.

    Responsibilities:

    Independently manage large trademark and design patent portfolios

    Identify potential new application filing recommendations and other issues

    Structure and conduct preliminary U.S. and international searches

    Analyzing and report preliminary search results

    Coordinate U.S and international full search projects

    Prepare responses to U.S. Office Actions and Information Disclosure Statements

    Work with foreign counsel on all aspects of searching, filing, prosecution, maintenance, disputes, and ownership

    Draft correspondence to clients including summaries of issues, recommendations, risk assessments

    Prepare and record worldwide assignments and other post-transaction closing documents impacting trademarks

    Assist with U.S. and international oppositions and cancellations

    Knowledge, Skills and Abilities:

    Minimum of 6-8 years on-the-job experience as an intellectual property paralegal, ideally in a law firm

    Must be proactive with strong research and analytical skills

    Highly organized with superior attention to detail

    Excellent communication skills with the ability to effectively communicate with clients

    Significant domestic and international experience including overall trademark and design patent portfolio management, clearance, due diligence, registration, maintenance and enforcement

    Ability to independently oversee all aspects of U.S. and foreign trademark and design patent prosecution, maintenance and disputes

    Ability to manage large, complex, international trademark and design patent portfolios

    Ability to prepare and submit design patent applications, including all supporting documents

    Ability to independently manage assigned docket dates including due date, reminders and follow-up actions in a timely manner

    Ability to analyze new and existing portfolios to identify gap filing recommendations, ownership and other issues

    Preliminary trademark search experience, preferably via Corsearch's online platform

    Experience coordinating international full search and trademark application filing projects, including analyzing each project, providing recommendations, corresponding with clients and foreign counsel, and analyzing and summarizing foreign associate opinions and recommendations

    Must be proficient with relevant IP websites and databases including USPTO and WIPO, preferably Corsearch for searching and trademark watching, as well as experienced with vendors such as Clarivate/CompuMark, Corsearch, PageVault , Orbit, etc.

    Ability to complete electronic filings in the USPTO, including the TTAB, and WIPO, and to delegate such filings as appropriate

    Familiarity with TTAB rules and procedures a plus

    Experience analyzing chain of title and updating IP ownership in the U.S. and internationally

    Experience analyzing trademark watch notices and managing watch services

    Must be able to analyze complex trademark and design patent portfolio matters

    Must be able to synthesize foreign associate opinions and recommendations into client correspondence

    Must be flexible and able to work collaboratively with supervising attorneys, paralegals, docketing, and other team members

    Experience with trademark and patent docketing software, preferably CPI, including docket entry, searching, and preparing reports, a plus

    Experience with domain name registration and management, copyrights, social media is a plus

    Must be available and willing to work overtime

    Working Conditions and Physical Effort:

    Work is normally performed in a typical office work environment

    The Firm will consider remote work options for this position

    Limited physical effort required and very limited exposure to physical risk

    Must be able to comply with all safety requirements when in our workplace

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