Intellectual Property Paralegal

Pearl River, NY 10965

Posted: 02/21/2019 Industry: None Job Number: 1758982 Pay Rate: $40.00/hour
Global manufacturer is seeking an Intellectual Property Paralegal to support attorneys and General Counsel, to perform various administrative tasks to assist department.

ESSENTIAL FUNCTIONS
  • 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.
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