Intellectual Property Prosecution Paralegal - New Jersey or New York Offices

Prominent mid-Atlantic law firm with multiple regional office locations seeks an Intellectual Property Prosecution Paralegal for our New Jersey or New York Offices with 5+ years of law firm intellectual property prosecution paralegal experience.  Responsibilities include:

• Prepare and file U.S. trademark prosecution and maintenance documents electronically with the USPTO including but not limited to applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorneys.
• Identify and prepare appropriate specimens of use for submission to the USPTO, and communicate with clients regarding same.
• Prepare and file trademark documents with WIPO and through the Madrid Protocol, including but not limited to applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.
• Work with and correspond with foreign counsel in connection with prosecution and maintenance of trademark applications/ registrations outside of the United States, including attending to notarization and legalization of documents.
• Communicate with clients regarding trademark status and upcoming deadlines as needed.
• Conduct preliminary trademark clearance searches online and USPTO website. Prepare and file copyright applications for registration.
• Conduct due diligence on trademark portfolios and IP-related corporate transactions.
• Assist with preparation and filing TTAB petitions, motions, and other paperwork.
• Assist with investigations of third-party use of marks, preserving evidence, creating PDFs and making exhibits for briefs and other filings. Assist in preparation and filing of UDRP actions.
• Prepare and file, or instruct, on all aspects of US, PCT, and foreign prosecution.
• Proof and edits patent applications and office actions and prepares office actions.
• File and assist in prosecution of design applications (including convention deadlines for filing abroad).
• Review files and prepare of Information Disclosure Statements and accompanying documents.
• Assist clients with ongoing third-party patent monitoring.
• Ensure deadlines are calendared and reported; experience with using trademark docketing software systems, preferably CPI.
• Maintain a docket of IP deadlines and coordinate and communicate deadline responses with relevant attorneys and staff.

Candidates must be highly organized and possess the ability to prioritize, be a team player, and have excellent written and verbal skills.  College degree and/or paralegal certificate required.  Strong working knowledge of MSOffice (Outlook, Word, Excel, PowerPoint), Relativity, and Concordance required.  Knowledge of iManage a plus.  We offer a competitive starting salary plus a comprehensive benefits package.  Salary is commensurate with experience.  The salary range for this position is $76,500 to $179,000.  Please email resume for consideration to:

Gayle P. Englert

Chief Human Resources Officer

Cole Schotz P.C.

Court Plaza North

25 Main Street, P.O. Box 800

Hackensack, NJ 07602-0800

genglert@coleschotz.com

Please visit us at our website  www.coleschotz.com
NEW JERSEY/NEW YORK/DELAWARE/MARYLAND/TEXAS/FLORIDA
Cole Schotz is an Equal Opportunity Employer