Chicago IL

Intellectual Property Paralegal

CM Legal

IP Paralegal

Our client is looking for an IP Paralegal. The IP Paralegal will provide substantive support to the IP practice group on a variety of projects; interface with clients, the PTO and other entities in the prosecution of client patents and the preparation and filing of trademarks.

As an IP Paralegal, your duties will include but not be limited to:

  • Prepare U.S. non-provisional and provisional applications and international filings
  • Prepare Information Disclosure Statements and cite references from foreign applications in related U.S. cases
  • Familiarity with USPTO document changes
  • Prepare responses to pre-examination USPTO Office Communications
  • Preparation of inventors’ letters and oaths/declarations
  • Review application file in preparation for payment of issue fee and payment of issue fee
  • Prepare and file US and international assignments
  • Prepare and file formal drawings and sequence listings
  • Correspond with clients regarding annuity fee payments
  • Perform legal research via Corsearch and other online services
  • Prepare and file trademark applications and amendments and responses to office actions for trademark applications under the supervision and direction of patent agents and attorneys
  • Prepare procedural amendments and responses to office actions for patent applications under the supervision and direction of patent agents and attorneys
  • Interface with clients, foreign associates and the USPTO under the supervision and direction of patent agents and attorneys
  • Review and organize IP transactional due diligence materials
  • Reconcile vendor invoices
  • Interact with other Paralegals, Project Assistants and other support personnel
  • Annually log at least 1500 billable hours

Skills & Competencies:

  • Experience working with a variety of IP related databases and applications
  • Excellent organization and research skills
  • Excellent verbal and written communication skills
  • Detail-oriented and able to work effectively under pressure
  • Ability to work independently and handle multiple tasks simultaneously
  • Willing to work overtime

Qualifications & Required Experience:

  • Bachelor’s degree required; ABA-approved paralegal certificate also preferred
  • Five or more years of law firm experience in an Intellectual Property practice required
  • Position also requires the ability to work under pressure to meet strict deadlines.

Computer Skills:
To perform this job successfully, an individual must be proficient in the following software:

  • Proficiency in navigating both the PAIR system and the USPTO database
  • Knowledge of Microsoft Windows, Word, Outlook and Excel; Internet experience
  • Max. file size: 300 MB.

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