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 any of our US offices, 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.
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.
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
Assist with the preparation and filing of TTAB proceedings.
Draft trademark assignments, and record ownership transfers and updates with the USPTO and WIPO, and coordinate recordation of ownership transfers and updates with foreign associates.
Draft and file 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.
Review, monitor, and maintain docket, including de-docketing actions in CPI.
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.
Willingness to work paid overtime as needed.
Applicants in California must meet the requirements of the CA Business and Professions Code section 6450
EXPERIENCE
Experience:
University degree
Minimum of 3 years of relevant experience 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 $103-125k.
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.