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Intellectual Property Paralegal

About Scarinci Hollenbeck:

Scarinci Hollenbeck is a growing practice of over 50 experienced attorneys. The position serves a section of experienced attorneys in the Intellectual Property and Entertainment area.

Job Summary:

Reporting to the Legal Paraprofessionals Manager, this role will be responsible for supporting 4-6 attorneys with all related paralegal projects and associated administrative aspects of the Intellectual Property section specialty.

Essential Duties/Responsibilities:
  • Review, monitor and maintain domestic and international trademark and patent docketing, liaise with third party docketing agencies, and communicate updates with attorneys on a regular basis; perform internal audit of docket calendar as needed.
  • Support the trademark and patent practice in all aspects of the U.S. trademark and patent registration process, including application filings, prosecution, and post-registration issues.
  • Correspond with foreign counsel regarding international trademark and patent applications.
  • Collaborate with section attorneys to respond to office actions, requests for extensions of time, statements of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
  • Assist with the preparation and filing of Trademark Trial and Appeal Board (TTAB)
  • Draft and file copyright applications and record ownership transfer and security agreements.
  • Review, summarize, and correspond with clients reporting notices received from foreign associates, United States Patent and Trademark Office (USPTO), World Intellectual Property Organization (WIPO), TTAB, and the Copyright Office.
  • Maintain contact with clients as to progress with their matters.
  • Draft and send reporting letters to clients regarding application status updates.
  • Organize and maintain case files, schedule client conferences and attorneys’ meetings.
  • Review and edit correspondence (engagement agreements, pleadings, petitions, motions, briefs, affidavits, contracts) and varied other specialty documents ensuring compliance.
  • Meet with attorneys, and other professional individuals seeking patent, trademark, or copyright protection to discuss assigned cases or projects.
  • Collaborate and assist attorneys within other sections, paralegals, and administration, particularly legal assistants assigned and covering the IP section.
  • Input billable paralegal and attorney time into WebView, maintaining billable paralegal requirements.
  • Actively participate and attend weekly IP section meetings.
  • Prepare and submit attorneys’ expense reports and other relevant administrative duties as needed such, as but not limited to, client matter intake and conflict check process, and closed case process.
  • Perform other duties and responsibilities as assigned or required.
Education and Required Skills:
  • Associate degree in Paralegal studies or related field or equivalent experience required.
  • 3+ years law firm experience in Intellectual Property.
  • Working knowledge of USPTO required.
  • TTAB experience, and federal court litigation experience a plus.
  • Knowledge of the music business strongly favored.
  • Ability to function well in a high-paced environment.
  • Ability to maintain confidential/sensitive information, exercises discretion and good judgement.
  • Deep understanding of legal terminology and principles, research methods, court processes.
  • Effective time management skills and excellent organizational skills.
  • Excellent verbal and written communication skills, and interpersonal and client service skills.
  • Strong attention to detail particularly in proofreading.
  • Strong analytical, problem-solving and research skills.
  • Strong technology skills and proficiency in Microsoft Office Suite, E-Discovery, Metastorm, NetDocuments, Elite, WebView; knowledgeable in Zoom or similar teleconference platforms.
  • Paralegal Certificate preferred.
  • Notary preferred.
Work Hours:
  • Little Falls, NJ location.
  • Currently offering hybrid option 3 days in office work and 2 days remote work contingent upon meeting annual billable hour requirement.
  • Full-time, non-exempt, Monday to Friday 9:00 a.m. – 5 p.m. (one hour lunch).
  • Overtime (over 40 hours) may be required from time to time.
  • Compensation range $80,000 – $90,000 based on experience and location.

Scarinci Hollenbeck is an Equal Opportunity Employer.

Submission Requirements:

Submit resume through our career portal or send to careers@sh-law.com.

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

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Scarinci Hollenbeck diamond

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