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Foreign Patent and Trademark Paralegal

Reference: CB24062
Location: Pennsylvania, United States
Sector: Legal
Job Type: Full Time
Date Posted: 16/02/2018
Recruiter: Major Legal Services

Our client is a large law firm in Pittsburgh seeking a Foreign Patent and Trademark Paralegal. This position assists attorneys in the clearance and prosecution of U.S. and foreign trademarks on behalf of the Firm's clients. Also responsible for conducting preliminary prosecution for US and foreign trademark applications, registrations, copyrights and domain names and performs other paralegal duties to support the IP group.

  • Prepares U.S. patent and trademark applications, affidavits and renewal applications.
  • Files routine documents with USPTO, mostly electronic.
  • Prepares correspondence to associate law firms, foreign associates and/or clients.
  • Performs preliminary patent and trademark searches and requests, comprehensive search reports from agents/search vendors and performs Internet investigations regarding search results.
  • Communicates with attorneys and clients regarding upcoming deadlines.
  • Conducts online investigations for infringing material.
  • Reviews and processes foreign associate and vendor invoices.
  • Drafts assignment documents for recordation of name changes, etc., and meets country specific requirements, such as notarization and legalization of documents.
  • Works as part of a team with attorneys, other paralegals and docketing staff.
  • Assists on due diligence reviews of portfolio status.
  • Work with attorneys preparing evidence on enforcement and prosecution matters.
  • Other duties as assigned.

Position Requirements:

  • BA/BS degree and/or Paralegal Certificate required.
  • Minimum 5 years US and foreign patent and trademark paralegal experience required.
  • Must have strong skills in Microsoft Word, Excel and Outlook.
  • Experience with a computerized docketing system, CompuLaw and ProLaw preferred.
  • Strong experience conducting patent and trademark clearance searches and completing and filing trademark and copyright forms, and/or strong experience in U.S. and
    foreign filings including design applications and preparing information disclosure statements.
  • Prior experience with the USPTO required.
  • Excellent communication and interpersonal skills required to interact with attorneys, staff and clients on a regular basis.
  • Strong organizational skills and attention to detail required to handle large volumes of work and handle numerous matters simultaneously.
  • Must be able to work effectively in a fast-paced environment, and meet deadlines.
  • Ability to work independently with minimal supervision and be a part of a team.
  • Willingness and ability to learn laws and understand regulations related to U.S. and foreign trademark regulations.

Our client provides its employees with competitive salaries and benefits, including PTO and paid sick time and a 401(k) plan. Employees are recognized and rewarded for their achievements through annual performance evaluations and salary reviews. The firm encourages ongoing personal development and supports a healthy work/life balance

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