Intellectual Property Paralegal - Chicago

Alchemy Legal - Chicago, IL


Major law firm LLP currently has a non-exempt position available for a full-time paralegal with patent and/or trademark experience. This position will be located in our Chicago office. Qualified candidates will have an undergraduate degree and/or paralegal certificate. The ideal candidate will be detail-oriented, possess strong organizational skills and be a team player. The person selected for this position must be able to work in a fast paced environment.

Job Responsibilities

  • Researches and compiles information pertaining to national and international intellectual property rights including searches of U.S. Patent and Trademark Office (PTO) records, foreign patent and trademark records, industry databases and general legal research.
  • Maintains patent and trademark docketing systems of due dates for all actions associated with international patent and trademark filings including foreign filing deadlines, national phase deadlines, office actions and responses, patent annuities and maintenance fees, renewals, oppositions, and Section 8 and 15 affidavits.
  • Prepares status summary reports for attorneys and clients.
  • Coordinates international filings with foreign law offices and/or other foreign entities.
  • Corresponds with clients regarding domestic and international patent and trademark prosecution.
  • Upon allowance of U.S. patent and trademark applications, reviews file and verifies that all required documents have been filed and accurately entered by the Patent and Trademark Office.
  • Reviews and takes action on correspondence received from foreign counsel.
  • Patents.
  • Prepares and files Information Disclosure Statements with the USPTO.
  • Prepares and files PCT applications, and U.S. national phase with the USPTO.
  • Assists with U.S. formality filings as directed.
  • Prepares cost estimates to enter the national phase in various countries, if requested by client.
  • Coordinates the filing of all international patent applications with foreign counsel.
  • Reviews, reports, responds to and tracks progress of all international patent prosecution actions as appropriate.
  • Trademarks.
  • Prepares and files statements of use, affidavits of use, renewal applications and Madrid Protocol applications with the USPTO.
  • Coordinates the filing of all international trademark applications with foreign counsel.
  • Reviews, reports, responds to and tracks progress of all international trademark prosecution as appropriate.

Job Requirements

  • Must possess a high level of professionalism and interpersonal skills so as to be able to work well with employees at all levels within the organization and maintain all information in the strictest of confidence.
  • Required to use tact and diplomacy when dealing with others.
  • Must have ability to read, write and communicate fluent English; ability to compose documents in the appropriate business style using correct grammar and spelling; ability to communicate clearly using proper grammar and diction over the telephone.
  • Must possess attention to detail, ability to balance multiple projects and have strong time management skills.
  • Must have ability to reason and apply common-sense understanding to situations encountered.
  • Ability to process routine daily functions while being able to resolve sensitive issues and complex assignments utilizing above average critical thinking skills.
  • Ability to work overtime as needed.
  • The physical demands of this position are representative of those that must be met by an employee in order for him or her to successfully perform the essential functions of the position. These include being both mobile and stationary throughout the work day, having the ability to transport 25 pounds and being able to operate a computer and other business equipment found in the office.

Major law firm LLP is a large full service, multi-state firm with offices in Chicago, Los Angeles, St. Louis, Southern Illinois and Washington D.C. At law firm, our behavior and the expectations we have of ourselves are guided by the values that we hold in the highest regard: integrity, a passion for excellence, a focus on serving the client, a value of diversity, innovation, creativity, trust and loyalty. Within the Firm, we value each other as people and colleagues.

In addition to the exceptional working environment and a competitive salary, Major law firm provides the following benefit options to qualifying employees:

• Medical Insurance
• Vision Insurance
• Dental Insurance
• Life Insurance & ADD policies
• Short & Long Term Disability Insurance
• Paid Parental Leave
• 401(k) & Profit Sharing plans
• Parking/Transportation Stipend
• Section 125 Plan (Pre-tax premiums, dependent care and medical reimbursement)
• Paid Holidays
• Paid Time Off (PTO)
• Employee Assistance Program (EAP)
• Employee Wellness Program
• Tuition Reimbursement
• College Savings Plan Deductions (529 Plans)
• Long Term Care

Compensation will be commensurate with experience, salary is flexible depending on the candidate (they told us to send over candidates with salary expectations)

Thank you!

Phillip Prodehl
Alchemy Legal
Nationwide Legal Recruitment and Placement

Posted On: Monday, November 19, 2018

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