[Hiring] Intellectual Property (IP) Paralegal @Greenberg Traurig

Role Description

Join our Intellectual Property Team as a Paralegal located in our New York City, Washington D.C., Minneapolis, Dallas, Houston or Austin office. The Intellectual Property (IP) Paralegal position will provide organizational and practice specific assistance to attorneys in the IP Department by managing patent prosecution and trademark matters, including related research, analysis, docketing, and e-filing. Also supports the department with general administrative duties and special projects related to IP matters.

Key Responsibilities

• Manages and organizes U.S. & foreign patent and trademark docket and processes for multiple IP attorneys.
• Prepares and files Provisional, U.S. Utility, Continuation, Divisional, Design, PCT & 371 US national stage applications, & reissue applications with the U.S. Patent and Trademark Office (USPTO).
• Files follow-on patent and trademark prosecution submission requirements such as response to office actions and issue fee payments with the USPTO.
• Prepares and files PCT applications with the IB and USPTO.
• Effects national phase entry of PCT applications.
• Prepares client formalities for execution (e.g., Declarations, Assignments & Power of Attorney).
• Performs assignment searches, assignment recordings, and handles chain of title projects.
• Docket management and calendaring requiring significant awareness of and sensitivity to time management and filing deadlines.
• Manages and updates files with USPTO patent center database and prepares responses as needed.
• Reviews, files, and prepares Information Disclosure Statements and accompanying documents.
• Drafts shells for Office Action Responses.
• Provides client management support by maintaining client portals, updating client status charts, running various client docket reports for portfolio analysis, and communication with clients regarding upcoming U.S. patent deadlines, requests for instructions, formalities reminders, and filings.
• Calculates Patent Term Adjustments and processes payment of Issue Fees.
• Corresponds with foreign associates, oversees payment of foreign associates' invoices, and prepares reporting letters to clients.
• Effects portfolio transfers and manages multi-client portfolios.
• Files and assists in prosecution of design applications (including convention deadlines for filing abroad).
• Proofs and edits patent and trademark applications, formal documents, and office actions, and prepares office actions’ shell responses.
• Meets all ethical and professional requirements of the firm and keeps up to date on all learning and development requirements at the firm.
• Meets internal and external deadlines, and successful time management, including during periods of prolonged intense work during and after regular office hours.
• Fulfills firm administrative responsibilities, including, but not limited to, timekeeping and billing requirements.
• Assists with other department activities as needed, and performs additional duties and responsibilities as assigned.
• Candidate should be flexible to work overtime as needed.

Qualifications

• High attention to detail, outstanding organizational skills, and the ability to manage time effectively.
• Ability to work under pressure to meet strict deadlines, adapt to a fast-paced, high pressure environment to achieve business goals and objectives.
• Ability to maintain composure, positive outlook, and professionalism.
• Recognize confidential, sensitive, and proprietary information and maintain confidentiality.
• Highly motivated, self-starter who can work well under minimal supervision, as well as take a proactive approach in being team-oriented.
• Ability to work both independently and as part of a cross-functional, collaborative team.
• Excellent interpersonal and communication skills (oral and written), and professional demeanor and presentation, including active listening and ability to convey information clearly.
• Ability to deal calmly and effectively with high stress situations, including unfavorable situations and/or when constructive criticism is given.

Requirements

• Bachelor’s Degree required, Certificate in Paralegal studies from an accredited institution preferred; equivalent experience considered.
• Certified Paralegal a plus.
• Minimum 5 plus years of relevant work experience in a professional environment. Law firm experience preferred.
• Extensive knowledge of U.S. patent rules and procedure; knowledge of PCT and/or national laws of other countries.
• Previous experience with Anaqua is a plus.
• Copyright application filing experience a plus.
• Proficiency in Windows-based software and Microsoft Office Suite, including Word, PowerPoint, Excel, and Outlook.
• Exceptional computer skills with the ability to learn new software applications quickly.
• Previous experience with Imanage is a plus.

Benefits

• Expected pay range: $40.86 to $49.03 Per hour.
• Salary determined based on education, experience, job-related factors permitted by law, internal equity, and market data.
• Full-time employees may be eligible for a discretionary bonus, health insurance with an optional HSA, short term disability, long term disability, dental insurance, vision care, life insurance, Healthcare and Dependent Care Flexible Spending Accounts, 401K, vacation, sick time, and an employee assistance program.
• Additional voluntary programs include: voluntary accident insurance, voluntary life, voluntary disability, voluntary critical illness and cancer insurance, and pet insurance.
• Commuter and Transit programs may also be available in certain markets.