Demo

IP Patent/Trademark Prosecution Paralegal *Hybrid* ($180,000/yr)

Direct Talent Solutions
New York, NY Full Time
POSTED ON 1/16/2025
AVAILABLE BEFORE 3/14/2025

Position: Intellectual Property Patent/Trademark Prosecution Paralegal

Location: Hackensack, NJ or New York, NY

Full Time: Yes (Hybrid) (3 days in office 2 days remote)

Salary range: $100,000-180,000 Full Benefits

Job Description:
We are looking for a highly qualified Intellectual Property Paralegal with at least 5 years of experience in intellectual property prosecution within a legal setting. This hybrid position offers the opportunity to work both on-site (three days per week) and remotely (two days per week) from our New Jersey or New York office locations. This role combines flexibility with collaboration in a dynamic environment.

Key Responsibilities:

  • Prepare and electronically submit U.S. trademark applications and maintenance filings, including office action responses, statements of use, renewals, assignments, and related documents.
  • Select and compile appropriate use specimens for submission to the USPTO while maintaining client communication.
  • File and manage international trademark applications through WIPO and the Madrid Protocol, addressing Notices of Irregularity, renewals, and assignments as needed.
  • Collaborate with foreign counsel on prosecution and maintenance of international trademarks.
  • Communicate with clients to provide updates on trademark statuses, deadlines, and necessary actions.
  • Conduct preliminary trademark clearance searches using online resources and official databases.
  • Assist with filing copyright applications and support intellectual property-related corporate transactions.
  • Provide assistance for TTAB proceedings, UDRP actions, and trademark investigations, including organizing exhibits and preserving evidence.
  • Handle U.S., PCT, and foreign patent filings, proofreading submissions, and managing critical deadlines.
  • File Information Disclosure Statements and other prosecution-related documentation.
  • Use trademark docketing software (e.g., CPI) to track deadlines and ensure they are met.
  • Coordinate with attorneys and clients regarding third-party patent monitoring and other relevant tasks.

Requirements:

  • At least 5 years of intellectual property prosecution experience in a legal environment.
  • A college degree or paralegal certification is mandatory.
  • Exceptional organizational skills, attention to detail, and the ability to manage priorities effectively.
  • Excellent written and verbal communication skills; a collaborative team player.
  • Proficiency in software tools such as MS Office (Outlook, Word, Excel, PowerPoint); familiarity with iManage, Relativity, and Concordance is a bonus.
  • Experience with trademark docketing systems (e.g., CPI) is preferred.

 

Salary : $100,000 - $180,000

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