Paralegal - Intellectual Property

Husch Blackwell LLP is a full-service litigation and business law firm with multiple locations across the United States, serving clients with domestic and international operations.  We have an immediate opening for a Paralegal in our Intellectual Property practice specialty center and our Technology, Manufacturing & Transportation strategic business unit. We prefer for this position to be in our in our Milwaukee, WI, office but will consider Kansas City, MO or St. Louis, MO office.  

SCOPE OF RESPONSIBILITIES:

The Paralegal is responsible for assisting with a full range of Patent and Trademark matters for a busy IP practice.  This includes assisting with preparation, docketing, electronic filing, portfolio management and registration and maintenance of Patent and Trademark applications.

ESSENTIAL JOB FUNCTIONS INCLUDE:

General

• Research and compile information pertaining to national and international intellectual property rights.
• Prepare status summary reports for attorneys and clients.
• Coordinate international filings with foreign law offices and/or other foreign entities.
• Collaborate with Docketing Team to ensure due dates for actions, including responses, renewals, oppositions, Section 8 and 15 affidavits, use affidavits, Patent Cooperation Treaty requirements, and payments of patent annuities in foreign countries are properly docketed and tracked.
• Assist in intellectual property-related litigation.
• Assist in oppositions, interferences and cancellations; draft necessary pleadings for use in these inter partes

 Trademarks & Patents

• Perform on-line searches of Patent and Trademark Office (PTO) records, industry databases and general legal research.
• Conduct searches for information regarding trademarks.
• File applications, statements of use, renewal applications, affidavits of use, and assignments.
• Draft responses to PTO actions and oppositions.
• Police client's trademarks to guard against potential infringements.
• Maintain foreign trademarks, which include corresponding directly with foreign associates and instructing them to search trademarks and to file applications, renewals, affidavits of use and oppositions.
• Obtain legalizations and certifications for filing foreign trademarks.

Copyright

• Draft and file renewal applications and infringement letters.
• Research and compile information about notice requirements, longevity of enforcement, and renewal options.

Other

• Learn/develop technical proficiency in database use and management, internet/electronic research, and project folder/electronic file maintenance.
• Independently organize and manage files.
• Attend and participate in internal CLEs.
• Anticipate attorney needs.
• Engage in occasional interaction with clients.
• Stay informed of developments in Paralegal industry.
• Meet annual billable hour requirement of 1500 hours.

MINIMUM REQUIREMENTS:

• Minimum of 3 years intellectual practice paralegal experience, patent experience preferred.
• Associate’s degree required; Bachelor’s Degree and/or Paralegal Certificate from ABA approved program preferred.
• Significant, substantive legal related experience may be considered in lieu of formal education

OTHER DESIRED QUALIFICATIONS:

• Detail oriented.
• Ability to work well under pressure, multi-task efficiently and be an independent thinker.
• Ability to interact effectively and professionally and provide exceptional service, internally and externally, at all times.
• Highly organized, able to prioritize workflow and manage projects.
• Ability to perform effectively with little or no supervision and within established time limits and on-going deadlines.

PHYSICAL REQUIREMENTS:

The physical activity of this position:

• Reaching. Extending hand(s) and arm(s) in any direction.
• Pushing. Using upper extremities to press against something with steady force in order to thrust forward, downward or outward.
• Pulling. Using upper extremities to exert force in order to draw, haul or tug objects in a sustained motion.
• Fingering. Picking, pinching, typing or otherwise working, primarily with fingers rather than with the whole hand as in handling.
• Grasping. Applying pressure to an object with the fingers and palm.
• Feeling. Perceiving attributes of objects, such as size, shape, temperature or texture by touching with skin, particularly that of fingertips.
• Talking. Expressing or exchanging ideas by means of the spoken word. Those activities in which they must convey detailed or important spoken instructions to other workers accurately, loudly, or quickly.
• Hearing.  Perceiving the nature of sounds at normal speaking levels with or without correction. Ability to receive detailed information through oral communication, and to make the discriminations in sound.
• Repetitive Motion.  Substantial movements (motions) of the wrists, hands, and/or fingers.

The physical requirements of this position:

• Sedentary work. Exerting up to 10 pounds of force occasionally and/or negligible amount of force frequently or constantly to lift, carry, push, pull or otherwise move objects, including the human body. Sedentary work involves sitting most of the time.

The visual acuity requirements including color, depth perception, and field vision:

• The worker is required to have close visual acuity to perform an activity such as: preparing and analyzing data and figures; transcribing; viewing a computer terminal; extensive reading; visual inspection involving small defects, small parts, and/or operation of machines (including inspection); using measurement devices; and/or assembly or fabrication parts at distances close to the eyes.

The conditions the worker will be subject to in this position:

• The worker is not substantially exposed to adverse environmental conditions (such as in typical office or administrative work).

Please include a cover letter, salary requirement and resume when applying.

EOE/Minority/Female/Disabled/Vet. Principal Applicants Only.