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IP Paralegal

Saint Louis, MO 63101

Posted: 11/14/18 Industry: Legal Secretary Job Number: 47156

A large, full service, multi-state law firm with offices in Chicago, Los Angeles, St. Louis, Southern Illinois, and Washington D.C. Is currently seeking a IP Paralegal. The ideal candidate will have heavy international patent experience with some trademark experience. This candidate will be detail-oriented, possess strong organizational skills and be a team player. The person selected for this position must be able to work in a fast paced environment.

Position: Direct Hire

Location: St. Louis, Missouri

Pay: Based on Experience

Similar Positions: Legal Secretary, Law Clerk, Paralegal

Responsibilities of the IP Paralegal:
  • Researches and compiles information pertaining to national and international intellectual property rights including searches of U.S. Patent and Trademark Office (PTO) records, foreign patent and trademark records, industry databases and general legal research.
  • Maintains patent and trademark docketing systems of due dates for all actions associated with international patent and trademark filings including foreign filing deadlines, national phase deadlines, office actions and responses, patent annuities and maintenance fees, renewals, oppositions, and Section 8 and 15 affidavits.
  • Prepares status summary reports for attorneys and clients.
  • Coordinates international filings with foreign law offices and/or other foreign entities.
  • Corresponds with clients regarding domestic and international patent and trademark prosecution.
  • Upon allowance of U.S. Patent and trademark applications, reviews file and verifies that all required documents have been filed and accurately entered by the Patent and Trademark Office.
  • Reviews and takes action on correspondence received from foreign counsel.

  • Prepares and files Information Disclosure Statements with the USPTO.
  • Prepares and files PCT applications, and U.S. National phase with the USPTO.
  • Assists with U.S. Formality filings as directed.
  • Prepares cost estimates to enter the national phase in various countries, if requested by client.
  • Coordinates the filing of all international patent applications with foreign counsel.
  • Reviews, reports, responds to and tracks progress of all international patent prosecution actions as appropriate.

  • Prepares and files statements of use, affidavits of use, renewal applications and Madrid Protocol applications with the USPTO.
  • Coordinates the filing of all international trademark applications with foreign counsel.
  • Reviews, reports, responds to and tracks progress of all international trademark prosecution as appropriate.

Requirements of the IP Paralegal:
  • An undergraduate degree and/or a paralegal certificate required
  • Must possess a high level of professionalism and interpersonal skills so as to be able to work well with employees at all levels within the organization and maintain all information in the strictest of confidence. Required to use tact and diplomacy when dealing with others.
  • Must possess attention to detail, ability to balance multiple projects and have strong time management skills.
  • Must have ability to reason and apply common-sense understanding to situations encountered.
  • Ability to process routine daily functions while being able to resolve sensitive issues and complex assignments utilizing above average critical thinking skills.
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