Intellectual Property Paralegal

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INTELLECTUAL PROPERTY PARALEGAL
The candidate will be coordinate and perform patent and legal research required by the Director and Patent Portfolio Managers. Review legal correspondence for detailed and complex requests for database recordation, establishment of deadline requirements, and case management purposes. Summarize legal documents for the Patent Portfolio Managers; Analyze documents for accuracy. Check all legal forms for accuracy. Prepare drafts of legal documents. Prepare legal and other correspondence. Prepare declarations. Disseminate, track, and retrieve required legal documents necessary for patent and trademark prosecution and copyright registration. Analyze and track intellectual property in compliance with University, State, and Federal policies and regulations for the protection of the University’s intellectual property. Initiate and monitor financial commitments for outside legal counsel. Manage status report of prosecution activities to ensure deadlines are met. Be a point of contact for C4C Intellectual Property Management and liaise with researchers, attorneys, licensees and other University units on administration processes of patent, trademark, copyright and license issues. Initiate and forward substantive composition of documents and correspondence which is commonly of a confidential, contractual and legal nature to University inventors, patent and trademark counsel, licensees and other corporate contacts. Provide support to Patent Portfolio Managers in preparing patent drafts with claims of appropriate scope. Provide support in the preparation and filing of selected patent applications for both U.S. and international patent applications and manage patent dockets related to such filing. Provide support for internal patent searches. Provide support for the preparation of voluntary claim amendments, office-action responses, re-examination requests and/or appeal briefs as required for pending patent applications. Assist Patent Portfolio Managers with detailed patent research and continuous updates and filings. May support Trademark Registrations (legal docketing, file management, assignments, classifications, reviewing/submitting specimens, reviewing/submitting statements of use, renewals, status reports, due diligence, domain registrations). May support Copyright Registrations (file management, interacting with developers to complete and submit registrations, obtaining/reviewing/filing physical hard copies/CDs/etc. for deposit copies, track registration). Coordination of all IP assets for projects under management (copyright, patent, trademark, and domain). Provide training, leadership, mentorship and assistance to other staff on legal administrative work and legal policies and procedures. Coordinate, facilitate and participate in IP Management staff meetings. Provide staff support to establish docketing, researching, and tracking protocols for all case activities. Investigate, triage, and outline solutions for IP Management needs. Suggest updates to database design for proper IP tracking.

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