Intellectual Property Transactions Legal Assistant

Profile

Senior Intellectual Property &
Technology Transactions Legal Assistant
Patent Due Diligence for Corporate Transactions,
Mergers & Acquisitions & Licensing matters
Compensation
$60,000 to $100,000 - with generous overtime and bonus
Benefits: Medical and Dental Coverage - Paid Time Off - 401K - Life and AD&D Insurance
Savings Accounts - Tuition reimbursement - Corporate Gym - Travel Reimbursement
Location
New York, NY - Midtown Manhattan
The Organization
Large U.S. Multinational Law Firm
Key Responsibilities
Assist attorneys and legal assistants in all phases and aspects of patent due diligence analysis for corporate financial transactions, mergers and acquisitions and licensing matters
Perform patent audits to determine the scope, legitimacy, enforceability, ownership, value, status and transferability of patent assets
Complete patent inventory for granted and pending patents, including owned, licensed, domestic and foreign patent rights
Review all documents including assignments, licenses, employment agreements, consulting agreements, maintenance agreements, joint ventures, distribution agreements, security documents and UCC filings to determine ownership, validity and transferability of assets
Evaluate expiration dates, filing and maintenance fees, missed payments, changes in small entity status, pending litigation, interferences, re-examinations, reissues or oppositions to determine status and value of patents
Evaluate claim language, patent specification and prosecution history of patents to determine scope of protection
Prepare supporting documents based on research; make recommendations for amendments to cover products or about deficiencies determining transaction prices
Perform freedom to operate searches to determine rights to exclude third parties or identify blocking patents
Organize, prepare and manage electronic and paper transaction documents and files
Conduct research regarding the availability of all types of patents, trademarks and corporate names
Perform title assignment and ownership searches using Dialog and outside searching agents
Compose patent, trademark, copyright and domain name schedules
Record documents with the USPTO and US Copyright Office
Handle all aspects of daily docketing, including: review mail and calendar dates; verify deadlines and input into the docket system; monitor docket daily for filing updates and deadlines and communicate same to attorneys.
Review incoming correspondence from U.S. Patent and Trademark Office for docket information
Prepare documents for filing, including: patent applications, Preliminary Amendments, Information Disclosure Statements, Responses to Missing Parts, Assignments, Amendments, payments of Issue Fees
Proofread issued patents and prepare related documents
Prepare necessary documents and process foreign patent applications; maintain foreign filing docket
Investigate a range of topics for background information from SASM&F library, the New York Public Library, specialized libraries and patent organizations such as USPTO, EPO, WIPO, UPO, INPADOC and Derwent WPI
Conduct research using various research tools, including the Internet, Westlaw, LexisNexis, Dunn & Bradstreet, PACER, Reedfax, Court Express and USPTO
Required Skills
6 years patent due diligence experience within a major law firm
Strong patent analysis skills
Ability to determine scope and value of patents as it relates to corporate transactions
Exceptional researching skills
Proficiency with MS Word and Excel, Concordance, Relativity and DocuMatrix, Westlaw, LexisNexis, Dunn & Bradstreet, PACER and other court-related websites, Reedfax, Court Express and USPTO
Bachelor's degree
Available to work extensive overtime, including weekends and travel

Company info

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