Intellectual Property Paralegal

Jackson Walker LLP; Austin (TX); On-site; USD 60,000 - 90,000; Full time

Job summary

Jackson Walker LLP in Austin, TX seeks an Intellectual Property Paralegal to support attorneys in IP practice, preparing and filing patent, trademark, and copyright applications and coordinating with clients and foreign counsel.

Ideal candidates have a paralegal certification, 5+ years in a law firm, and strong organizational and communication skills, with experience in docketing and IP databases. Equal opportunity employer.

Qualifications

• Paralegal certification required.
• Minimum 5 years’ experience in a law firm or professional services environment.
• Proven ability to prepare IP applications and responses with attorney guidance.
• Strong proofreading and editing of legal documents.
• Experience with USPTO and foreign filings a plus.

Responsibilities

• Assist with drafting patent, trademark, and copyright applications and responses to Office Actions.
• Prepare and file documents with USPTO and U.S. Copyright Office.
• Coordinate with foreign counsel on international filings and IP matters.
• Maintain issued patents and registered trademarks, including domestic and foreign filings.
• Utilize USPTO and WIPO databases and docketing systems.
• Monitor deadlines through CPI docketing system and respond accordingly.
• Organize client materials and maintain matter files.
• Communicate status to clients, attorneys, and foreign associates.
• Attend client meetings and provide additional support as needed.

Skills

IP knowledge

Docketing

Client communication

Education

Paralegal certification

Bachelor’s degree preferred

High school diploma or GED

Job description

Department: Paralegal

Reports To:Paralegal Committee

FLSA: Non-Exempt

POSITION SUMMARY:

The Intellectual Property Paralegal provides specialized legal and administrative support to attorneys in the Intellectual Property practice. This role assists with preparing and filing patent, trademark, and copyright applications; maintaining issued patents and registered trademarks; and coordinating communications with clients, government agencies, and domestic and foreign counsel. The Intellectual Property Paralegal maintains positive contact with clients, attorneys, and support staff and observes strict confidentiality of client, personnel, and firm matters.

ESSENTIAL DUTIES AND RESPONSIBILITIES:

• Assist with drafting patent, trademark, and copyright applications and responses to Office Actions.
• Prepare and file documents with the U.S. Patent and Trademark Office (USPTO) and U.S. Copyright Office.
• Coordinate with foreign counsel regarding international filings and intellectual property matters.
• Coordinate maintenance of issued patents and registered trademarks, including domestic and foreign filings.
• Access and utilize USPTO systems such as Patent Center, Trademark Center, and the Trademark Status and Document Retrieval (TSDR).
• Monitor and manage file deadlines through the CPI docketing system and respond accordingly.
• Accumulate documentation from clients and organize materials within the appropriate matter file.
• Utilize relevant intellectual property websites and databases, including USPTO, WIPO, the European Patent Office, Texas Secretary of State Office, and foreign annuity payment systems.
• Communicate with USPTO personnel regarding the status of filings, hearings, and Office Action responses.
• Communicate with clients and foreign associates regarding the status of patents, trademarks, copyrights, trademark renewals, and maintenance fees.
• Attend client meetings as requested.
• Provide additional support and perform other duties as assigned.

QUALIFICATIONS:

• Bachelor’s degree from an accredited college or university preferred.
• High school diploma or GED required.
• Paralegal certification required.
• Substantial equivalent work experience may be considered in lieu of a degree or paralegal certification
• Minimum 5 years’ experience in a law firm or professional services environment.
• Ability to proofread and edit legal correspondence and documents for grammar, spelling, punctuation, and accuracy.
• Ability to prepare initial drafts of intellectual property applications and responses to Office Actions based on attorney guidance and research findings.
• Strong organizational skills with the ability to prioritize multiple tasks and meet deadlines in a fast-paced environment.
• Ability to create and maintain calendar deadlines and reminders to ensure timely communications with clients, foreign associates, and internal teams.
• Strong interpersonal and communication skills to interact effectively with clients, attorneys, and staff in person, by email, and by telephone with professionalism and tact.
• Familiarity with intellectual property databases, filing systems, and docketing systems preferred.

WORK CONDITIONS:

This role operates in a professional office environment with little exposure to excessive noise or temperature.

The above is intended to describe the general content of and requirements for the performance of this job. It is not to be construed as an exhaustive statement of essential functions, responsibilities, or requirements.

We are proud to be an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, age, veteran status, sexual orientation, gender identity, pregnancy, genetic information, or any other characteristic protected by applicable federal, state, or local law and will not be discriminated against on the basis of disability. It is our intention that all qualified applicants are given equal opportunity and that employment decisions be based on job-related factors.