Intellectual Property Paralegal

Job Summary

Gibson Dunn is a leading global law firm, advising clients on significant transactions and disputes. Our exceptional teams craft and deploy creative legal strategies that are meticulously tailored to every matter, however complex or high-stakes. The firm’s work is distinguished by a unique combination of precision and vision.

Based in Orange County, the Intellectual Property Paralegal will be responsible for supporting Intellectual Property attorneys in the transactional department.

This role reports to the Manager of Paralegal Services.

Responsibilities include:

• Conduct IP due diligence, including trademarks, patents, copyrights, and domain names (this skillset is essential as more than 50% of the job involves IP due diligence).
• Record ownership transfer, security agreements and releases with the US Patent and Trademark Office and the US Copyright Office.
• Prepare and file U.S. trademark applications, responses to office actions, requests for extensions of time, statements of use, declarations of use, declarations of incontestability, renewals, and other filings related to U.S. trademark prosecution.
• Manage and oversee U.S. and international trademark portfolios.
• Conduct and analyze trademark availability searches and draft summary of results.
• Research and prepare cost estimates for filing domestic and foreign trademark applications and renewals.
• Review, monitor, and maintain docket, including de-docketing actions in CPI, tracking deadlines on a weekly basis, and preparing reports as needed.
• Assist with the preparation and filing of TTAB proceedings.
• Draft trademark assignments, security agreements, and releases of security agreements, and record ownership transfers, liens, and releases and other updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates.
• Draft and file IR/Madrid international applications, irregularity responses, subsequent designations, and WIPO renewals.
• Correspond with foreign associates to file national trademark applications, provisional refusal responses, renewals, oppositions/cancellations, and other matters related to foreign trademark prosecution/enforcement.
• Prepare and file state trademark applications and renewals and record ownership transfer and security agreements.
• Draft and file copyright applications and record ownership transfer and security agreements.
• Review, summarize, and correspond with clients reporting notices received from foreign associates, USPTO, WIPO, TTAB, and the Copyright Office.
• Oversee legalization of documents.
• Analyze and report watch notices.
• Coordinate and manage intake of newly acquired trademark portfolios.
• Maintain client portfolio status reports.
• Assist with special projects, including adverse matters, demand letters, customs recordation, and UDRP actions.
• Maintain and update files in iManage and electronic file storage.
• Additional tasks and responsibilities as assigned or required.

Qualifications

• Superior analytical and reasoning abilities.
• Must possess strong written and verbal communication skills.
• Excellent organizational skills and a strong attention to detail.
• Proactive and able to handle efficiently multiple projects and client matters simultaneously.
• Ability to work independently, and as part of a team, with members across multiple offices in a fast-paced environment.
• Flexible and able to multi-task, balancing priorities and tight deadlines.
• Ability to work overtime as needed.

Experience

• Bachelor’s Degree required.
• Paralegal certificate from an ABA-approved program required.
• 5+ years of relevant experience preferred.
• Proficient with Microsoft Word, Excel, required and proficiency with CPI (or similar docket platform), Westlaw, CompuMark/Saegis, and Orbit Intelligence preferred.

 

 

Gibson Dunn will consider for employment qualified Applicants with Criminal Histories in a manner consistent with the requirements of local law.

Compensation & Benefits:

The annual compensation range for this position is $103k to $125k. The salary offered within this range will depend upon qualifications and other operational considerations.

Benefits offered for this position include health care; retirement benefits; paid days off, including sick time, and vacation time; parental leave; basic life insurance; Flexible Spending Accounts; as well as discretionary, performance-based bonuses.

Location:

Orange County

EEO Statement

Gibson Dunn & Crutcher LLP is committed to the principles of equal employment opportunity for all partners, employees and applicants and, in accordance with the applicable federal and state laws, does not discriminate on the basis of sex, race, creed, color, religion, matriculation or political affiliation, national origin, alienage or citizenship status, ancestry, age, marital status or partnership status, family responsibilities, disability, medical condition, personal appearance, genetic information, predisposing genetic characteristics, sexual orientation, military status, status as a victim of domestic violence, stalking and sex offenses, arrest or conviction record, or on any other basis prohibited by law.