What are the responsibilities and job description for the Prosecution Support Associate position at Affordable Personnel Services?
About the Position
We are seeking an experienced Intellectual Property Prosecution Paralegal to join our team at Affordable Personnel Services. As a key member of our IP department, you will play a vital role in the successful prosecution and maintenance of trademarks, copyrights, and other intellectual property rights for our clients.
Responsibilities
- Filing and prosecuting trademark applications with the USPTO, including electronic documents such as applications, office action responses, extensions of time, statements of use, affidavits, renewals, assignments, and powers of attorney.
- Preparing and filing trademark documents with WIPO and through the Madrid Protocol, including applications for International Registration, responses to Notices of Irregularity, renewals, assignments, and powers of attorney.
- Working with foreign counsel to prosecute and maintain trademark applications/registrations outside of the United States, including notarization and legalization of documents.
- Communicating with clients regarding trademark status and upcoming deadlines as needed.
- Conducting preliminary trademark clearance searches online and on the USPTO website.
- Filing copyright applications for registration.
- Conducting due diligence on trademark portfolios and IP-related corporate transactions.
- Assisting with preparation and filing of TTAB petitions, motions, and other paperwork.
- Assisting with investigations of third-party use of marks, preserving evidence, creating PDFs, and making exhibits for briefs and other filings.
- Assisting in preparation and filing of UDRP actions.
- Preparing and filing all aspects of US, PCT, and foreign prosecution.
- Proofreading and editing patent applications and office actions, preparing office actions as needed.
- Filing and assisting in the prosecution of design applications (including convention deadlines for filing abroad).
- Reviewing files and preparing Information Disclosure Statements and accompanying documents.
- Assisting clients with ongoing third-party patent monitoring.
- Ensuring deadlines are calendared and reported, utilizing trademark docketing software systems (preferably CPI).
- Maintaining a docket of IP deadlines and coordinating and communicating deadline responses with relevant attorneys and staff.
Requirements
- Highly organized with strong prioritization skills.
- Excellent written and verbal communication skills.
- College degree and/or paralegal certificate required.
- MS Office (Outlook, Word, Excel, PowerPoint) proficiency required.
- Relativity and Concordance knowledge required.
- iManage knowledge a plus.
