Paralegal I - Technology & Ip Transactions

About Kirkland & Ellis

At Kirkland & Ellis, we are united in our ambition and drive to move forward. We share core values that help us achieve excellence: collaboration, talent empowerment, service, inclusion, respect and gratitude. Our people are our greatest asset, and we invest in the brightest talent and encourage a diversity of perspectives and strengths to create dynamic teams that operate at the pinnacle of their field. Our talented professionals show up every day knowing they will engage in meaningful work, continuous learning and professional development.
 
As one of the world’s leading law firms, we serve a broad range of clients with market-leading practices in private equity, M&A and other complex corporate transactions; investment fund formation and alternative asset management; restructurings; high-stakes commercial and intellectual property litigation; and government, regulatory and internal investigations. We handle the most complicated and sophisticated legal matters because we don’t just meet industry standards, we create them. We bring innovation and entrepreneurialism to every engagement and, as a result, have long-standing client relationships with leading global corporations and financial sponsors. With 6,500 employees (including 3,500 lawyers) operating from 20 offices across the United States, Europe, the Middle East and Asia, we are one of the largest law firms in the world and a top financial performer.

Essential Job Functions

The Chicago, New York, and Bay Area offices are seeking an experienced Technology and IP Transactions paralegal to join its busy practice group. The paralegal will work with attorneys on matters from the beginning of a transaction through completion, managing aspects of the due diligence process as well as closing and post-closing procedures, managing the flow of information, and ensuring adherence to best practices.

Qualifications & Requirements

Education, Work Experience, Skills

This position requires 2 or more years of paralegal experience in intellectual property transactional work, preferably including conducting due diligence reviews of intellectual property, drafting correspondence and diligence memoranda, preparing of worldwide assignments and post-closing recordings, and preparation of intellectual property schedules for corporate and secured lending transactions.  A successful candidate must be able to work independently as well as with a team, have an acute attention to detail, and is able to multi-task and prioritize while working in a high pressure, deadline-driven environment. Bachelor’s degree preferred, but not required.  Overtime is required.

Technologies/Software

Strong technical skills are required, particularly Microsoft Word, Excel, Outlook, SAEGIS and CPi Docketing.  Knowledge of Carpe Diem, Westlaw, SharePoint, PowerPoint, and LegalKey is a plus.

Certificates, Licensures, Registrations

Paralegal Certificate is preferred.

Applicants in California must meet the California Business and Professional Code, Section 6450 (c) requirements.

ESSENTIAL FUNCTIONS
(This list is not exhaustive and may be supplemented and changed as necessary.)

• Understand the parameters of a transaction to conduct intellectual property ownership searches.
• Review information memoranda and target company websites for information regarding (i) the target company’s business, (ii) the IP held or used by the target company, (iii) acquisitions and divestitures made by the target company, (iv) important markets and plans to expand into new markets.
• Draft instructions to the Kirkland library on conducting intellectual property searches.
• Develop an understanding of the capabilities and limitations of the patent, trademark, copyright, domain name, and litigation databases used by Kirkland’s library.
• Conduct intellectual property searches on the SAEGIS trademark database, the USPTO and USCO website databases, and website databases maintained by foreign IP offices and WIPO.
• Maintain a good understanding of USPTO trademark and patent rules and procedures and US CO copyright office rules and procedures.
• Maintain a working knowledge of some foreign trademark and patent law.
• Review and analyze IP search reports, determining status and ownership of properties, presence of outstanding liens and chain of title issues.
• Review patent and trademark documents recorded at the USPTO and/or conduct web research to aid in analyzing and clarifying chain of title.
• Review continuity records for U.S. patents to determine how applications relate to one another.
• Review dockets and complaints for active patent and trademark litigation.
• Prepare intellectual property schedules based on an understanding of requirements of for various types of transactions.
• Draft memoranda summarizing types of searches conducted, and contents of an IP portfolio and issues relating thereto.
• Review and mark up target company IP disclosure schedules, note outstanding issues and draft footnotes when necessary.
• Resolve discrepancies between target company IP disclosures and K&E search results.
• Assist attorneys in preparing IP closing checklists.
• Draft short-form patent, design, trademark and copyright assignments, security interests, and security interest releases.
• Coordinate confirmatory assignments for foreign trademarks, patents and designs.
• Prepare filings to record changes in ownership for patents and trademarks at the USPTO and USCO.
• Prepare and file Secretary of State forms for updating ownership of state trademark registrations and trade names.
• Coordinate Apostille certification or consulate legalization for foreign trademark and patent assignments and other title-affecting documents.
• Oversee and manage the process of recording assignments and other title-affecting documents for foreign patents and trademarks.
• Maintain a recordal status chart.
• Instruct and correspond with local counsel regarding recording assignments and other title-affecting documents.

WORK ENVIRONMENT

This job operates in a professional office environment.

How to Apply

Thank you for your interest in Kirkland & Ellis LLP.  To complete an application and submit your resume, please click "Apply Now."

Equal Employment Opportunity

All employment decisions, including the recruiting, hiring, placement, training availability, promotion, compensation, evaluation, disciplinary actions, and termination of employment (if necessary) are made without regard to the employee’s race, color, creed, religion, sex, pregnancy or childbirth, personal appearance, family responsibilities, sexual orientation or preference, gender identity, political affiliation, source of income, place of residence, national or ethnic origin, ancestry, age, marital status, military veteran status, unfavorable discharge from military service, physical or mental disability, or on any other basis prohibited by applicable law.

Closing Statement

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