Business Division
Our Corporate, Technology, Real Estate, Intellectual Property and Charities do sophisticated and ground-breaking work in areas such as mergers and acquisitions, brands, intellectual property, hotels, investment funds, sponsorship and partnerships. As a leader in advising successful people around the world we understand the unique issues surrounding private capital. This can range from investment, structuring and control of cross-border investments to corporate and personal tax issues.
Overview of Intellectual Property Practice
What sets the legal services provided by our intellectual property lawyers apart is their understanding of the world in which you operate. A number of our team have spent time working as in-house counsel across a broad range of industries and sectors. Our collective 'hands-on' experience positions us to better understand client businesses, and it is a point of pride for us to act as part of your team.
As an international IP law firm, our global network allows us to partner with colleagues in countries around the world to protect your rights and we have a strong record across the US, Europe and Asia Pacific. Our multilingual team of intellectual property lawyers spans all major time zones.
Whether you are a rapidly expanding technology business, a luxury fashion brand, a leading pharmaceutical manufacturer or a talented individual in the world of sports, art or entertainment, you cannot afford to neglect your intellectual property rights – which is where our IP lawyers can help.
In today's highly competitive global market, identifying these rights and controlling their exploitation and protection can be the difference between success and failure. Our intellectual property solicitors provide legal advice on every stage of the development and life cycle of rights such as patents, copyrights, trademarks and database and design rights – from creation to enforcement.
For more information on our Intellectual Property practice please visit this page.
The Role
This role will sit in our Los Angeles office.
The Intellectual Property Paralegal position at Withers is responsible for preparing (or assisting with the preparation of) trademark, patent, and copyright applications/office action responses, assisting with intellectual property litigation, and conducting related intellectual property research.
General knowledge of USPTO rules related to the filing and prosecution of trademark and patent applications is required. General knowledge of foreign patent and trademark prosecution via the Patent Cooperation Treaty (PCT) and Madrid Protocol is also required. General knowledge of TTAB and PTAB proceedings is also required.
Patents - U.S.
- Work with attorneys to prepare and file applications/office action responses with the USPTO, including electronic filing of all USPTO documents.
- Work with attorneys to ensure timely responses to Office Actions, payment of issue fees, and submission of formal drawings.
- Monitor and docket deadlines for pending patent applications and granted patents.
- Prepare and file Information Disclosure Statements.
- Monitor status and work with attorneys/clients regarding foreign filing opportunities, including PCT and other foreign applications.
- Report information to clients regarding communications from the USPTO and status of pending patent applications and granted patents.
- Execute US and international searches.
- Review granted patent documents to determine maintenance requirements and calculate terms.
Patents – Patent Cooperation Treaty (PCT)
- File all applications, drawings, and documents electronically, including confirming applications and drawings to PCT formatting requirements, preparing request forms, selecting the desired International Search Authority, and ensuring correct applicant, inventor and priority information.
- Monitor PCT timeline, including ensuring the timely filing of Demand and national/regional entry.
- Work with attorneys and clients to evaluate findings set forth in International Preliminary Examination Reports and select countries for national (regional) entry.
- Work with attorneys regarding International Search Reports, including the relevance of cited art, strategies for possible Article 19 and/or Article 34 amendments, and ensuring any cited art is disclosed in corresponding national cases.
- Review and maintain a docket for timely reporting of communications to the client and foreign associates.
- Keep attorneys apprised of upcoming deadlines and coordinate with attorneys to keep clients updated regarding the same.
- Assist with preparing cost estimates related to the selections of countries for national (regional) entry.
Trademarks – U.S.
- Execute availability/preliminary screening searches on trademark databases, including available international databases.
- Conduct on-line Internet searching for possible conflicting domain names or other internet usage.
- Work with attorneys and clients to determine correct mark, including design image, if any, and proper classification of goods or services.
- Assist with preparing and filing trademark/service mark applications, either use-based or intent-to-use via electronic filing.
- Monitor status and work with attorneys and clients regarding possible priority-based foreign applications.
- Review office actions issued by the USPTO and assist with preparing draft responses.
- Determine acceptability of specimens evidencing use and assist with preparing and filing Amendments to Allege Use or Statement of Use.
- Review Certificates of Registration for accuracy and determine dates for evidence of continued use/incontestability and renewal.
- Assist with preparing and filing Section 8 and 15 Affidavits and Renewal Applications.
- Assist with preparing and filing Trademark and/or Trade Name Registration forms (State).
- Prepare status reports.
- Review and maintain a docket for timely reporting of communications to the client and foreign associates.
- Keep attorneys apprised of upcoming deadlines and coordinate with attorneys to keep clients updated regarding the same.
Foreign Patents and Trademarks
- Assist with preparing correspondence to foreign associates, ensuring transmission of all required documents, and work with foreign associates through compliance with local required filing formalities, including legalization of documents if necessary.
- Monitor status to ensure timely filing of request for examination and dates for payment of requisite maintenance fees in patent cases.
- Review granted patent documents to determine maintenance requirements and calculate term.
- Work with attorneys and clients regarding validation procedure after grant of European patents.
- Work with attorneys upon receipt of office actions issued by foreign offices to ensure proper instructions and timely responses in both patent and trademark cases.
- Review Certificates of Registration to determine renewal dates and use requirements in trademark cases.
Copyright
- Work with attorneys and clients to determine type of copyright work, correct authorship, and copyright claimant.
- Complete electronic copyright registration forms, including Request for Special Handling, if appropriate.
This list of duties and responsibilities is not exhaustive. It is intended to describe the general content of, and requirements for the performance of this job, and as such, the role may also include the undertaking of additional tasks as required.
Key Skills and Experience
- Familiarity with legal terminology pertinent to the areas of assignment
- Ability to prioritize and multitask effectively
- Ability to work as a team as well as independently
- Previous experience with intellectual property matters; knowledge of USPTO rules and procedures
- A minimum of five years of experience as an Intellectual Property Paralegal is required
- Must possess strong technical skills and have a good working knowledge of Microsoft Word, Excel, Outlook, PowerPoint, and programs like FileSite/iManage and Elite
- Strong communication skills with the ability to express self effectively, both orally and in writing
- Interpersonal skills with the ability to establish effective working relationships with colleagues
Education Requirements
- Bachelor’s Degree strongly preferred.
- Paralegal Certificate from an ABA-approved program required
For California, the expected salary range for this position is between $115,000 and $140,000. The actual compensation will be determined based on experience and other factors permitted by law
About Withers
Where global collaboration achieves exceptional results.
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A law firm focused on people and collaboration.
For the past 125 years, Withers has supported some of the world’s most remarkable people and organizations at defining moments in their lives.
We are the only international law firm focused on successful individuals and private capital, working closely with founders, investors and family offices. We also advise governments, charities, global brands and start-ups of all shapes and sizes.
Many of our clients are shaping the future, and creating solutions to tackle many of the world’s problems. It makes for a fascinating and challenging practice.
Our role is to get to know each individual client, find out where they want to be, and help them to get there – whether they are building a business, buying a home or protecting and defending their interests.
To meet their unique needs we are exceptionally collaborative, working together across teams and time zones. And we are agile – focusing on strategy rather than rigid ideas and traditional hierarchy.
Join us to be part of a team that is always looking to the future. Where initiative, big ideas and bold moves are always encouraged. Where you can truly be yourself.
We are delighted to announce that we have been awarded Mansfield Certification Plus in relation to our recruitment and leadership progression efforts in the US and UK. This certification is an encouraging milestone as we continue to champion diversity within our organization and in the wider legal sector.
For more information on Withers, please visit the following: General Career Site, LinkedIn, About Us
Business Division
Our Corporate, Technology, Real Estate, Intellectual Property and Charities do sophisticated and ground-breaking work in areas such as mergers and acquisitions, brands, intellectual property, hotels, investment funds, sponsorship and partnerships. As a leader in advising successful people around the world we understand the unique issues surrounding private capital. This can range from investment, structuring and control of cross-border investments to the corporate and personal tax issues.
Equal Opportunities Employment Statement
The firm is an Equal Employment Opportunity employer. Equal employment opportunity has been and will continue to be a fundamental principle at the firm. Employment at the firm is based upon personal capabilities and qualifications without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, military and veteran status, gender identity or expression, genetic information, or any other characteristic protected by federal, state, or local law. The firm prohibits and will not tolerate any discrimination or harassment on the basis of any of these classifications or characteristics.
If you are interested in applying for employment and need special assistance or an accommodation to use our website to apply for a position, please contact the firm at (203) 789-1320 or email [email protected] with your request. Determinations on requests for reasonable accommodation are made on a case-by-case basis.
