Intellectual Property Paralegal

Gibson Dunn is a leading global law firm, advising clients on significant transactions and disputes. Our exceptional teams craft and deploy creative legal strategies that are meticulously tailored to every matter, however complex or high-stakes. The firm’s work is distinguished by a unique combination of precision and vision.

Based in New York, Washington, D.C., or Orange County the Intellectual Property Paralegal will be responsible for supporting Intellectual Property attorneys in the transactional department.

This role reports to the Transactional Paralegal Supervisor and Associate Director of Paralegal Services

Responsibilities Include

• Preparing and filing U.S. trademark applications, responses to office actions, requests for extensions of time, statements of use, declarations of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
• Overseeing U.S. and international trademark portfolios, including communicating with foreign associates and coordinating with the client.
• Conducting and analyzing trademark availability searches and draft summary of results.
• Researching and preparing cost estimates for filing domestic and foreign trademark applications and renewals.
• Drafting and filing IR/Madrid international applications, irregularity responses, subsequent designations, and WIPO renewals.
• Corresponding with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution/enforcement.
• Preparing and filing state trademark applications and renewals and record ownership transfer and security agreements.
• Reviewing, monitoring, and maintaining dockets, including de-docketing actions in CPI, tracking deadlines on a weekly basis, and preparing reports as needed.
• Conducting IP due diligence, including trademarks, patents, copyrights, and domain names.
• Assist with the preparation and filing of TTAB proceedings.
• Drafting trademark assignments, security agreements, and releases of security agreements, and record ownership transfers, liens, and releases and other updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates.
• Drafting and filing copyright applications and record ownership transfer and security agreements.
• Reviewing, summarizing, and corresponding with clients and reporting notices received from foreign associates, USPTO, WIPO, TTAB, and the Copyright Office.
• Overseeing legalization of documents.
• Analyzing and reporting watch notices.
• Coordinating and managing intake of newly acquired trademark portfolios.
• Maintaining client portfolio status reports.
• Assisting with special projects, including adverse matters, demand letters, customs recordation, and UDRP actions.
• Maintaining and updating files in iManage and electronic file storage.
• Additional tasks and responsibilities as assigned or required.

Qualifications

• Superior analytical and reasoning abilities.
• Strong written and verbal communication skills.
• Excellent organizational skills and a strong attention to detail.
• Proactive and able to handle efficiently multiple projects and client matters simultaneously.
• Ability to work independently and as part of a team across multiple offices in a fast-paced environment.
• Flexible and able to multi-task, balancing priorities and tight deadlines.
• Willingness to work paid overtime as needed.
• Proficient with Microsoft Word and Excel, required proficiency with CPI (or similar docket platform), Westlaw, CompuMark/Saegis, and Orbit Intelligence preferred.

Experience

• Bachelor’s degree preferred, or an equivalent combination of education and substantive paralegal experience. Candidate must meet any applicable state requirements governing the performance of paralegal duties, including any required certifications or qualifications.
• 5 years experience in an Am Law 100 environment

Gibson Dunn will consider for employment qualified Applicants with Criminal Histories in a manner consistent with the requirements of local law.

Compensation & Benefits

The annual compensation range for this position is $100-130k. The salary offered within this range will depend upon qualifications and other operational considerations.

Benefits offered for this position include health care; retirement benefits; paid days off, including sick time, and vacation time; parental leave; basic life insurance; Flexible Spending Accounts; as well as discretionary, performance-based bonuses.