So sorry, that position has been filled. Please go ahead and submit your application. We may have other positions that would be the perfect fit for you. Alternatively, you may want to apply to one of the following related jobs:

Intellectual Property Paralegal (Trademark & Patent)

Irvine, CA 92612

Job Type: Law Firm Job Number: 7561 Salary Range: $95,000-$105,000

Job Description

Our client, a prominent law firm based in Irvine, CA is seeking an Intellectual Property Paralegal to join their winning team!

Trademarks & Copyrights
  • Prepare and submit U.S. and international trademark applications for registration, including those through the USPTO, Madrid Protocol, and foreign associates, as well as manage related prosecution and post-registration maintenance filings.
  • Draft correspondence and liaise with clients and foreign associates regarding trademark prosecution and maintenance matters.
  • Obtain and manage client instructions for both domestic and international trademark issues.
  • Communicate filing and prosecution instructions to foreign associates for trademark applications in their jurisdictions.
  • Coordinate the filing and defense of foreign oppositions and cancellation actions, including managing communication with clients and foreign associates, collecting evidence, and facilitating the legalization of documents as needed.
  • Review trademark watch notices for potential conflicts with clients’ trademarks, conduct investigations into ownership and usage, prepare client reports, and track all unresolved issues.
  • Monitor the progress of third-party applications related to enforcement actions and collaborate with attorneys and litigation paralegals to ensure timely filing of oppositions, if necessary.
  • Conduct trademark clearance searches.
  • Prepare and file registration applications, responses, and document recordation requests with the U.S. Copyright Office.
  • Register intellectual property rights with U.S. Customs and Border Protection.
Patents
  • Conduct intellectual property (IP) due diligence for both domestic and international patents.
  • Manage and oversee patent portfolios for U.S. and foreign jurisdictions.
  • Research and prepare cost estimates for filing domestic and international patent applications, as well as managing annuities.
  • Draft and file U.S. patent applications, responses to office actions, extension requests, petitions, issue fee forms, renewals, and other related filings for U.S. patent prosecution.
  • Prepare client communications regarding domestic and international patent prosecution tasks, including follow-up to ensure timely completion.
  • Coordinate the execution of declarations, powers of attorney, patent assignments, and record ownership transfers with the USPTO and WIPO, as well as manage the recordation of ownership updates with foreign associates.
  • Draft and file PCT applications, including Article 19 & 34 amendments and other PCT-related filings.
  • Communicate with foreign associates to file national patent applications, instruct them to pay annuities, and manage other aspects of foreign patent prosecution and enforcement.
  • Review and monitor the daily docket in collaboration with the IP docketing department to ensure timely actions are taken.
  • Oversee the legalization of documents as needed.
  • Maintain client portfolio status reports and update files in iManage.
  • Perform additional tasks and responsibilities as assigned.
General Intellectual Property
  • Draft template documents related to intellectual property prosecution and enforcement for attorneys.
  • Independently manage and track a docket of deadlines, monitor numerous outstanding issues, and follow up with clients and attorneys as needed.
  • Review and verify the accuracy of the docket, collaborating with the docketing department when necessary.
  • Prepare customized portfolio status reports based on client needs.
  • Assist corporate attorneys with IP-related due diligence reviews and the recordation of title transfers.
  • Manage the intake and transfer of client IP portfolios, including transfers in and out.
  • Serve as the primary point of contact for clients and foreign associates.
  • Handle additional assignments and projects as required.
  • Collaborate with and oversee administrative support staff as needed.
EDUCATION, SKILLS, AND EXPERIENCE REQUIREMENTS:
  • A minimum of 8 years of experience as an IP paralegal or senior legal assistant, with at least 5 years of recent, hands-on experience managing trademark prosecution for both domestic and international patent and trademark portfolios.
  • The role requires significant interaction with clients and foreign associates, necessitating sound judgment and effective communication skills.
  • A Paralegal Certificate is highly preferred.
  • Extensive experience in communicating with clients, foreign associates, and third parties, both written and verbal.
  • Familiarity with USPTO, EUIPO, WIPO, and other international trademark databases and online filing systems.
  • Strong knowledge of domestic and international trademark laws, rules, and regulations.
  • Proficiency with Microsoft Office Suite (Outlook, Word, Excel).
  • Knowledge of TTAB filing procedures is a plus.
  • Excellent organizational skills and keen attention to detail.
  • Strong written and verbal communication skills.
  • Ability to prioritize tasks, assignments, and client needs effectively.
  • Ability to adapt to change, manage multiple demands, and work well in a team-oriented environment.
  • Self-motivated, demonstrating good judgment, strong planning abilities, and independent problem-solving and analytical skills.
  • Experience conducting searches and analyzing online trademark databases, and familiarity with trademark docketing systems (experience with FIP is a plus).
The Phoenix Group Advisors is an equal opportunity employer. We are committed to creating a diverse and inclusive workplace and prohibit discrimination and harassment of any kind based on race, color, religion, gender, sexual orientation, gender identity or expression, national origin, age, genetic information, disability, or veteran status. We strive to attract talented individuals from all backgrounds and provide equal employment opportunities to all employees and applicants for employment.

Meet Your Recruiter

Joseph Ramos
Principal Recruiter

Apply Online Apply with LinkedIn Apply with Facebook Apply with X

Send an email reminder to:

Share This Job:

Related Jobs:

Login to save this search and get notified of similar positions.

About Irvine, CA

Take the next step in your career journey in the vibrant city of Irvine, California! Nestled in the heart of Orange County, this thriving community offers unparalleled growth opportunities and an unbeatable quality of life. With its close proximity to stunning beaches, world-class shopping at South Coast Plaza, a bustling culinary scene featuring diverse cuisine options, and cultural attractions like the Irvine Museum and Irvine Barclay Theatre, Irvine has something for everyone. Whether you're into outdoor activities in Irvine Regional Park or catching a game at the Angel Stadium of Anaheim or the Honda Center, this region has it all. Explore our job listings today and discover why Irvine is the perfect place to advance your career!

Testimonials

View All