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.

Certifications:

• 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.