Part-Time Intellectual Property Paralegal

JOB TITLE:    Part-Time Intellectual Property Paralegal
STATUS:    Non-Exempt
REPORTS TO:    Paralegal Manager

JOB SUMMARY

Provide support to the Intellectual Property Practice Group.

RESPONSIBILITIES

  • Manage full docket of patent and trademark related deadlines; prepare weekly docket deadline reports for attorneys
  • Prepare and file U.S. provisional, non-provisional, convention and design application documents and PCT applications with corresponding data sheets, declarations, and other supporting documents
  • Prepare and file petitions, Information Disclosure Statements, preliminary amendments and other patent prosecution related documents
  • Due diligence followup on the status of all pending applications and processing of any documents filed
  • Correspond with foreign counsel to assist in coordination of notarization, legalization, and apostille for documents filed with foreign trademark and patent offices
  • Conduct ownership searches of patents and published applications
  • Draft and file trademark applications, statements of use, affidavits of use, amendments to registrations, renewal applications, office action responses, declarations, assignments, appointment and revocation of attorney
  • Draft quarterly and semi-annual client status reports 
  • Research trademark law and procedures; analyze trademark goods and services descriptions
  • Preliminary review of a full search trademark clearance report; conduct investigations into the usage of potentially barring trademarks that appear in a trademark clearance search, and prepare memos reporting on the investigation results

QUALIFICATIONS

  • Required - Bachelor’s degree 
  • Paralegal certificate preferred
  • 5+ years of related paralegal experience
  • Strong knowledge of U.S. patent and trademark rules and procedures; working knowledge of filing procedures in other countries; excellent research skills; strong oral and written communication skills; proficient in working with Word and Excel

Freeborn & Peters LLP is an Equal Opportunity Employer. We encourage applicants who will contribute to the diversity of our practice and our Firm. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, ancestry, age, sexual orientation, marital status, gender identity, disability, veteran or military status, or any other status or class protected under federal, state or local law.

Freeborn & Peters LLP has a mandatory COVID-19 vaccination policy, subject to accommodations for medical or religious reasons.

Contact Details:
[email protected]
Freeborn & Peters LLP
311 S. Wacker Drive
Suite 3000
Chicago, IL 60606