Job Description

Please note that Jackson Walker is not currently accepting search firm submissions in connection with this opening.

Intellectual Property Paralegal

Department: Paralegal

Reports To: Paralegal Committee

Location: Houston

FLSA: Non-Exempt

Jackson Walker, the largest law firm in Texas, has an exciting full-time employment opportunity for an Intellectual Property (IP) Paralegal in our Houston office. The IP Paralegal assists attorneys in all phases of preparing and filing patent applications, applying for registration of trademarks and/or copyrights, preparing and filing documents to maintain issued patents and registered trademarks, and drafting transmittal letters and other communications to coordinate information from and to clients and other domestic and foreign counsel. This role is tasked to perform docketing and maintain attorney dockets.

ESSENTIAL DUTIES & RESPONSIBILITIES:

The specific duties may vary somewhat depending on the subject matter of the intellectual property.

• Assist with initial draft of patent, trademark, and copyright applications, responses to Office Actions, and other pertinent documents as needed. File same with U.S. Patent and Trademark Office and U.S. Copyright Office.
• Coordinate with foreign counsel on foreign filings of the above.
• Coordinate maintenance of issued patents and registered trademarks (domestic and foreign).
• Access and utilize Patent Application Information Retrieval (PAIR) system of USPTO (private and public) and Trademark Electronic Search System (TESS) and related websites.
• Monitor status of file deadlines through PATTSY docketing system and respond accordingly.
• Accumulate necessary documentation from client, reviewing and organizing same in file.
• Familiarity and ability to work within the following web sites: USPTO, wipo.int, European patent office, foreign annuity payments web site.' Draft Trademark and/or Copyright Applications, Responses to Office Actions, and other pertinent documents as needed.
• Communicate with USPTO personnel regarding status of filings, hearings, and office action responses.
• Communicate with clients and foreign associates regarding status of patent, trademarks, copyrights, maintenance fees, etc.
• Attend client meetings as requested.
• Perform legal research, including use of Westlaw, etc.
• Other duties as assigned by the employer.

QUALIFICATIONS:

• Ability to proof and perform editing (e.g., punctuation, grammar, spelling) of routine law office correspondence and legal case matters. Perform non-complex arithmetic calculations when verifying calculations on forms and documents; maintain records and filing systems.
• Ability to create initial draft of applications and responses to office actions based on information provided by assigning attorney and discovered through research.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Ability to create and maintain calendar deadlines and reminders to facilitate timely communications with clients, foreign associates, within the firm, and to ensure timely filing.
• Interpersonal skills necessary to communicate and follow differing instructions effectively from a diverse group of clients, attorneys, and staff to provide information with courtesy and tact.
• Interpersonal skills necessary to communicate in person, by e-mail, and telephone to provide information with courtesy and tact.
• Knowledge of searching trademark database for initial clearance preferred.

Education:

• 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.

Experience:

• Minimum of 5 years’ experience in a law firm or professional services office

Working Conditions:

• Normal office environment with little exposure to excessive noise and temperature.
• Work occasionally requires more than 40 hours per week to perform the essential duties of the position; may require irregular hours.

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.

If you require a reasonable accommodation to complete the application or interview process, please contact us at BusinessProfessionalRecruiting@jw.com