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Paralegal – Trademarks and Patents

Smith Anderson, Raleigh North Carolina

The Paralegal is responsible for providing support to trademark and patent attorneys. Under the direction of an attorney, with minimal supervision, assists with a range of legal support by conducting research, preparing and filing various documents with the United States Patent and Trademark Office (“USPTO”), assisting foreign counsel with preparing and filing such documents in various foreign intellectual property offices, and gathering the appropriate documentation. Experience with trademark applications, electronic filings, and drafting assignment documents required. Similar experience in the patent area is highly desired but not required. Must be proficient in conducting, reviewing and analyzing trademark searches in U.S. and international databases; as well as reviewing, analyzing, and reporting on comprehensive trademark searches from outside trademark search vendors. Must possess high level communication skills (written and verbal). Trust, accuracy and ability to multi task under pressure are important to this position. 
Duties include but are not limited to:Prepare and file trademark registration applications, statements of use, extension requests, affidavits of use and incontestability, renewal applications, notices of opposition, cancellation petitions and other papers with the USPTO, including the Trademark Trial and Appeal Board (“TTAB”), and various state agencies and assist foreign counsel in preparing and filing such documents in various foreign intellectual property offices.Perform trademark screening clearance searches and other internet-based factual research.Prepare and file patent-related documents with the USPTO, including the Patent Trial and Appeal Board (“PTAB”), and assist foreign counsel in preparing and filing such documents in various foreign intellectual property offices.Review and manage trademark and patent dockets on a regular basis to ensure that deadlines are met and that attorneys are notified on a regular basis of upcoming deadlines; generate standard and customized status reports as needed.Prepare and maintain policies and procedures designed to ensure the effective and efficient operation of the firm’s trademark and patent practices.
Knowledge and Experience:5+ years of experience in the legal field, primarily as a Trademark Paralegal.Knowledge of U.S. trademark and patent rules, regulations, and procedures and working knowledge of the trademark and patent laws of other countries.Experience in assisting with filing and prosecuting (i) trademark registration applications, pursuant to the Madrid Protocol and (ii) patent applications, pursuant to the Patent Cooperation Treaty (“PCT”)Knowledge of USPTO rules and procedures, including those of the TTAB and PTAB.Experience in conducting trademark clearance searches.Familiarity with Model Code of Ethics and Professional Responsibility.Proficient knowledge of Microsoft Office including Excel.
Education:Bachelor’s degree or equivalent related work experience.ABA approved Paralegal course of study or North Carolina State Paralegal Certification.Maintain Certification through Continuing Legal Education.  
Smith Anderson is an equal opportunity employer, and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability status, protected veteran status or any other characteristic protected by law.
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