IP Paralegal

Job Locations US-NC-Charlotte
Job ID 2020-2368
Category
Paralegal

Overview

Are you looking for an opportunity to take your legal career to the next level?  Are you looking for a place to gain experience and join a hard-working and dedicated team? Look no further, as the Charlotte office of Nelson Mullins is searching for their next great IP Paralegal!

A Day in the Life

Be prepared to hit the ground running! You’ll be working directly with our Intellectual Property team’s attorneys and paralegals. You’ll assist with daily needs, including:

 

  • Prepare complex, multi-document USPTO filings daily, including review based on filing checklists, entry into electronic IP Quality Assurance Department log for double-checking, edits if applicable, routing to attorney for final review, submission of filing, and reporting of filed documents to client via email.
  • Manage a heavy trademark and patent prosecution docket, including U.S. and foreign marks and renewals and US and foreign patents and patent applications. 
  • Correspond with foreign counsel and clients to provide letters containing substantive attorney input on actions, and to effectuate all foreign trademark and patent prosecution.
  • Interface with Foreign Filing Department regarding foreign patent applications to ensure all documents required to complete foreign/international filings for the day are received and to answer client-specific questions.
  • Daily review of incoming USPTO electronic correspondence and other documents received via postal mail to prepare correspondence reporting all new documents and deadlines to clients.
  • Send requests/instructions and interface with internal staff or outside vendors to create patent illustrations and Information Disclosure Statements.
  • Independently and proactively handle non-substantive U.S. docket items such as formalities documents, transfer of rights via assignments, and other administrative client portfolio management.
  • Make calls to the USPTO to follow up on the status of filed documents such as Petitions and to confirm with formalities officers and patent examiners regarding any discrepancies from normal patent office requirements.
  • Create “shell” response documents/letters for attorneys to complete, incorporating pending case/claims information and a summary of the rejections set forth by the patent/trademark office.
  • Send case information updates to Docketing Department for CPI, IP Quality Assurance Department for IPDAS, and Accounting Department for CMS.
  • Review attorney docket reports from CPI for upcoming deadlines.
  • Review Daily Docket Clearance reports for deadlines pertaining to timekeepers' cases, check on status, discuss with attorney if necessary, ensure all deadlines are met, and respond to Clearance report to ensure action status is updated in CPI to avoid past-due deadlines.
  • Organize and prepare files, docket information, and action items for incoming and outgoing file transfers.
  • Review any changes to USPTO rules and accompanying filing/docketing procedural changes provided by the IP Procedures Committee.
  • Conduct legal research as needed to review USPTO rules and requirements, for instance in the Manual of Patent Examining Procedure, with support from IP Quality Assurance Department.

We Know You

You’re eager to learn, self-motivated, and thrive under pressure. Strong organizational and communication skills are only matched by your keen eye for detail. You’re a technology pro and can easily master any new program given to you.

 4-year degree/paralegal certificate is strongly preferred, but willing to consider related job experience.

  • Prior law firm experience is a big plus!
  • Please note, occasional overtime may be required to meet business needs.

Who We Are

With more than 800 attorneys, policy advisors, e-discovery professionals and other business professionals, Nelson Mullins has strong roots in the business community and an appreciation for new directions in the business world. As a Firm, Nelson Mullins has a strong foundation of community service and good citizenship. Our professional staff teams likewise promote these values, with opportunities to participate and play roles in various pro bono and community service initiatives. We collaborate with each other and with our clients, working side-by-side towards shared goals.

 

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