Intellectual Property Assistant

Position: IP Assistant

Department: Intellectual Property Prosecution and Trademark

Status: Permanent, Non-Exempt

Reports to: Attorney(s) and IP Practice Manager 

Hours: Flexible Hours, Monday-Friday

Location: CURRENTLY 100% REMOTE. Eventually in Philadelphia, PA or Wilmington, DE (partially remote and flexible scheduling available)

 

Panitch Schwarze Belisario & Nadel LLP, a renowned domestic and international intellectual property boutique, seeks to hire a highly qualified IP Assistant to join our Patent Prosecution and Trademark team in the Philadelphia or Wilmington, DE office. Panitch Schwarze offers a competitive salary, benefits, time off program and offer flexible scheduled including working partially remote.

 

GENERAL SUMMARY

Assist attorneys with patent prosecution, IP transactional matters and trademark matters.

 

QUALIFICATIONS

  • 5+ years of IP legal experience in patents and trademarks required.
  • Bachelor’s degree or an equivalent amount of legal experience required.
  • Experience with US patent and trademark application filing and prosecution process required.
  • Comfortable using Office365, CPI and IPDAS experience preferred.
  • Ability to multi-task, work independently and organize workload to meet deadlines.
  • Ability to complete projects and tasks in a thorough and timely manner with limited supervision.
  • Consistently demonstrates judgment and discretion in a result orientated environment.
  • Strong oral and written communication skills.

 

ESSENTIAL JOB DUTIES

Patent Prosecution:

  • Work independently to manage docket and ensure attorneys can meet all deadlines and regularly update docketing department regarding actions taken.
  • Prepare patent applications and prosecution documents including, but not limited to, amendments, responses, communications, and appropriate transmittal forms during all stages of patent prosecution.
  • Prepare and file applications and USPTO correspondence via IPDAS/EFS Web.
  • Prepare client matter request forms for new cases, follow up to ensure signed Engagement Letters are received.
  • Correspond with US and foreign clients and foreign associates re: routine prosecution issues, acknowledging correspondence received and reviewing documents received for completeness.
  • Prepare manual invoices to send to clients and associates.
  • Draft email correspondence to be revised and sent by the attorney.
  • Utilize IPDAS software to generate prosecution documents and manage prior art.
  • Make travel arrangements.
  • Other miscellaneous duties as assigned.

Trademark:

  • Prepare client matter request forms for new cases, follow up to ensure signed Engagement Letters are received.
  • Preliminary screening searches.
  • Preparing images of stylized and design marks for filing.
  • Preparation of specimens for filing.
  • Review of foreign registration certificates and draft letter to client to advise regarding same; consult sources to determine renewal term and penalties for non-use; review with attorneys.
  • Correspondence with foreign counsel regarding all foreign trademark filings.
  • Sending powers of attorney to clients and getting them legalized; handling client questions regarding same.
  • Correspondence with clients regarding progress of foreign applications.
  • Status checks of foreign applications.
  • Generating cost estimates using IP Global Estimator.
  • Generating status lists and reports as may be requested by clients and attorneys.
  • Draft trademark assignments.
  • Obtaining name change documents and incorporation certificates from Secretaries of State.
  • Record trademark assignments and name change documents with USPTO.
  • Compile and prepare exhibits for domain name proceedings; assist with filing of domain name proceedings.
  • Assist with inter partes proceedings preparation and exhibits, and document production.
  • Assist with preparation and filing of applications, extension requests, and allegations of use as needed.
  • Assist attorneys locating information in order to respond to client requests.

 

The knowledge and contributions of our administrative professionals play a key role in supporting the success of our Philadelphia and Wilmington, Delaware IP law offices. Staff members assist attorneys in meeting client needs and work to ensure internal stability within the firm. If you are interested in joining the Panitch Schwarze Belisario & Nadel LLP team, you may send your resume via email to careers@panitchlaw.com or by mail to:

Panitch Schwarze Belisario & Nadel LLP
ATTN: Human Resources
Two Commerce Square
2001 Market Street - Suite 2800
Philadelphia, PA 19103-7044

 

It is the long-standing policy of the firm to hire well qualified people to perform the many tasks necessary in providing high quality legal service. An integral part of this policy is to provide equal employment opportunity for all persons.

In this regard, the firm: (1) adheres to federal, state, and local laws, regulations and guidelines with regard to nondiscrimination against job applicants and firm employees; and (2) provides equal employment opportunity for all persons without regard to the person’s age, race, color, national origin, ancestry, religious creed, gender, gender identity or expression, sexual orientation, mental or physical disability, military status, or any other basis of discrimination prohibited by law, including in its recruiting practices and its administration of all hiring, working conditions, benefits and privileges of employment, compensation, training, opportunities for advancement (such as promotion, transfers, and terminations of employment), and any other term or condition of employment. All firm personnel are expected to carry out their various job responsibilities in a manner that comports with and is fully supportive of the firm’s equal employment opportunity policy.

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