“Winthrop”
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Position(s) I am Applying for

Paralegal - Intellectual Property

Winthrop & Weinstine is seeking a full-time Paralegal to work in our Intellectual Property Department. The responsibilities and qualifications for this position will include, but are not limited to:
  • Assist in prosecution of patents, trademarks, and copyrights, both domestically and internationally.
  • Assist in management and maintenance of patent and trademark dockets in Foundation IP for multiple clients and multiple attorneys. Prepare docket portfolio and deadline reports; communicate with clients regarding upcoming deadlines and requirements in the US and worldwide.
  • Assist in transfer and recordation of patents, trademarks and copyrights.
  • Prepare and file PCT applications. Review and report all incoming documents from the RO, IB, ISA, and IPEA; preparing and filing responses as necessary (Article 19, 34, 92bis Requests, etc.).
  • Prepare and file foreign direct national and national stage patent applications; prepare and file foreign trademark applications including via the Madrid Protocol.
  • Correspond with foreign counsel at all stages of prosecution. Review, research, and recitation of foreign IP laws and requirements to clients.
  • Perform trademark searches. Review and preparation of responses to Office Actions & Notices of Suspension; preparing and filing of Statements of Use, Extension Requests, Declarations of Use, Renewals. Review watch notices, monitor and investigate third-party trademark use and monitor deadlines. Assist in trademark enforcement efforts.
  • Record billable time in billing system for tasks completed.
  • Advise on urgent matters.
  • Experience with Foundation IP preferred.
  • Extreme attention to detail and deadline oriented in a fast paced environment.
  • Strong communication, analytical, and organizational skills.
  • Proficient computer skills, including, but not limited to, Outlook, Word, Excel, Adobe, Foundation IP, time entry software, and many IP resources on the Internet (ePCT, PAIR, EFS, TSDR, TESS, TEAS, Global Dossier, Espacenet, foreign IP sites); ability to learn new software programs as needed.
  • Ability to be flexible with time and adjust to changing work environment.
  • Use of sound judgment and discretion working with highly confidential information.
  • Excellent research and writing skills.
  • Make independent and critical decisions regarding exchange of information among parties, file management, delegation of responsibilities, etc.
  • Ability to effectively work within a team environment.

  • Individuals must have 5+ years of experience in the IP field as a paralegal with a strong grasp of the general flow of both patent and trademark prosecution and enforcement, both domestically and internationally. Paralegal certificate or Bachelor’s degree is preferred.