IP Paralegal

Our client is a premier business litigation and intellectual property firm with decades of experience, and they were named one of the top boutique law firms to work for by the Daily Journal. Some of their lawyers have been recognized nationally including one of their founding partners who was named “Lawyer of the Year” by Best Lawyers in America. Their practice areas include commercial litigation, intellectual property, class actions, government & regulatory and white collar investigations & defense.

Currently they are looking to add an IP Paralegal who can work a hybrid schedule out of their office in Irvine, CA.

• Managing worldwide client portfolios, including due diligence, providing clients with forecasts for timing and costs of IP prosecution, and periodic preparation of portfolio audits and status reports;
• E-filing PCT applications and all follow-on filings (including Chapter II demands and responses to international search report/written opinion), with the U.S. Receiving Office and/or International Search and Examination authorities and e-PCT;
• E-filing U.S. patent applications and all follow-on filings with USPTO via EFS-Web;
• E-filing copyright applications;
• Preparing and e-filing trademark applications and all follow-on filings (including statements of use, section 8 & 15 declarations, and renewals) with USPTO via TEAS;
• Substantive reporting of patent and trademark office actions to clients for both domestic and international matters;
• Calendaring deadlines for patents, trademarks, and copyrights using docketing software;
• Entering billable time, foreign associate invoices, and filing costs into financial database;
• Corresponding with foreign associates and clients regarding ongoing prosecution of international patent and trademark applications;
• Handling TTAB for disputes regarding trademarks;
• Engaging new clients and providing quotes for service;
• Assigning new clients and matters to attorneys and/or staff for handling;
• Training of other paralegals for trademarks and/or copyrighting and creating best practice/standard operating procedures on how to handle;
• General legal and administrative assistance when required.

• Maintains up to date comprehensive understanding of IP documents and forms;
• Maintains up to date understanding of legal process, USPTO, and PCT filing procedures;
• Comprehensive understanding of company policies, procedures, and processes.
• Maintains confidentiality;
• Establishes and maintains interpersonal relationships and promotes a positive work environment;
• Methodical approach to work, with a strong focus on teamwork, organizational ability, communication, accuracy, and pride in the quality of work.