Paralegal (Patent and Trademark Prosecution)

Akerman LLP, a top 100 U.S. law firm with a reach that extends across the Americas and globally, is seeking an experienced Patent and Trademark Prosecution Paralegal. We are a client-driven enterprise, recognized by Financial Times as among the most forward thinking law firms in the industry. Assembling a hand-crafted team for every client engagement, we leverage our more than 700 lawyers and business professionals across 24 offices. The location for this position is flexible.

Preferred to have five or more years of experience as a patent and/or trademark (preferably both) prosecution paralegal at a law firm directly handling large patent or trademark portfolio prosecution tasks such as:

• Manage a full docket of patent and trademark-related deadlines, send timely reminders to clients and attorneys, and ensure that deadlines are handled and collect information and instructions
• Prepare and file U.S. and Madrid trademark applications, declarations, renewals, extensions of time, and other USPTO filings
• Prepare and file U.S. provisional, non-provisional, convention and design patent application documents and PCT and Hague applications, along with related application data sheets, declarations, and other documents
• Prepare and file information disclosure statements, including obtaining copies of foreign references and machine translations
• Assist with preparation and filing of responses to patent and trademark office actions
• Conduct in-house trademark screening searches on the TESS, SAEGIS, Corsearch, and WIPO Global Brand Database
• Record documents such as assignments, name changes, and lien releases with the USPTO and comprehend chain of title issues and ability to prefect same
• File documents with the TTAB and prepare non-substantive procedural filings
• Instruct and supervise patent and trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with foreign patent and trademark offices
• Create customized patent and trademark records reports for clients
• Support patent and trademark due diligence for mergers and acquisitions

Skills & Competencies:

• Extensive knowledge of U.S. patent and trademark rules and procedure; working knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein and familiarity with the Madrid Protocol, Hague and PCT requirements
• Must have a broad understanding of and to be able to independently use and/or file documents via PAIR, EFS Web, Patent Center, Global Dossier, EPAS, ePCT, WIPO IP Portal, TEAS, ETAS, TTABVUE
• High level of proficiency with technology including Microsoft Office Suite applications and internet research tools
• Strong organizational and time and deadline management skills
• Ability to work confidently and efficiently under pressure and tight deadlines
• Reliable and dependable team player who is able to adapt quickly to new surroundings
• Must be a good planner who is very detail-oriented and has the ability to organize and prioritize
• Candidate should be action and results-oriented; able to multi-task daily responsibilities
• Work independently, taking initiative to move projects to conclusion
• Ability to manage large client portfolios with numerous deadlines

We offer an excellent benefits and compensation package. Please submit your resume and salary requirements. EOE

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