Intellectual property paralegal Jobs in Sunnyvale, CA

Our client, a growing national law firm with offices in Palo Alto, has a great opportunity available for an experienced Intellectual Property Paralegal to join their team. The IP Paralegal will be responsible for supporting Intellectual Property attorneys in the transactional department.

Responsibilities include :

• Conduct IP due diligence, including trademarks, patents, copyrights, and domain names (this skillset is essential as more than 50% of the job involves IP due diligence).
• Record ownership transfer, security agreements and releases with the US Patent and Trademark Office and the US Copyright Office.
• Prepare and file U.S. trademark applications, responses to office actions, requests for extensions of time, statements of use, declarations of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
• Manage and oversee U.S. and international trademark portfolios.
• Conduct and analyze trademark availability searches and draft summary of results.
• Research and prepare cost estimates for filing domestic and foreign trademark applications and renewals.
• Review, monitor, and maintain docket, including de-docketing actions in CPI, tracking deadlines on a weekly basis, and preparing reports as needed.
• Assist with the preparation and filing of TTAB proceedings.
• Draft trademark assignments, security agreements, and releases of security agreements, and record ownership transfers, liens, and releases and other updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates.
• Draft and file IR / Madrid international applications, irregularity responses, subsequent designations, and WIPO renewals.
• Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions / cancellations, and other matters related to foreign trademark prosecution / enforcement.
• Prepare and file state trademark applications and renewals and record ownership transfer and security agreements.
• Draft and file copyright applications and record ownership transfer and security agreements.
• Review, summarize, and correspond with clients reporting notices received from foreign associates, USPTO, WIPO, TTAB, and the Copyright Office.
• Oversee legalization of documents.
• Analyze and report watch notices.
• Coordinate and manage intake of newly acquired trademark portfolios.
• Maintain client portfolio status reports.
• Assist with special projects, including adverse matters, demand letters, customs recordation, and UDRP actions.
• Maintain and update files in iManage and electronic file storage.
• Additional tasks and responsibilities as assigned or required.

Qualifications

Experience