Intellectual Property Paralegal
Pearl River, NY 10965
- Assist General Counsel with patent infringement litigation needs; tracking down and cataloging documentation, gathering discovery items, preparing Cease and Desist letters, claim charts, etc.
- Assist Group Patent Counsel with patent prosecution matters, including: correspondences with outside counsel on non-substantive matters; preparation of materials necessary for responding to Office Actions; maintenance of prosecution documents and prior art library.
- Coordinate between relevant parties, arrange meetings, monitor time lines and due dates; obtain proper signatures on and notarization of documents; and routing documents to necessary departments.
- Respond to requests for patent-related information, including: providing patent documents, create and generate reports using IPSS to support business; uploading and organize patent information.
- Assist department in maintaining patent department files as necessary, including: filing documents and updating information on documents.
- Prepare letters, Declarations, Assignments, agreements and other patent-related legal documents (from templates), including: reporting issuance of patents; assisting in preparation of Patent Subject Matter Information Sheets for foreign filing decision making; corresponding with foreign patent counsel regarding simple prosecution issues.
- Prepare draft design patent applications.
- Proofread allowed patent claims.
- Track active patents for patent marking websites and assist in maintaining patent marking websites.
- Assist with invoices, including: address electronic invoicing issues for providers; track/allocate monthly/quarterly billings; initial review of invoices from outside counsel; approve straightforward invoices; assist with general invoice issues (e.G., generate billing summaries on providers or subject matter).
- Maintain file room of documents and product samples (internal and external products).
- Prepare spreadsheets for patent portfolio review meetings covering maintenance fees due, expiring patents, upcoming due dates, and other outstanding prosecution matters.
- Research patent procedures, rules, laws.