Intellectual Property Paralegal (Trademark & Patent) Mid-to-senior level Intellectual Property Paralegal sought by Rutan & Tucker to join its team handling primarily Trademark prosecution as well as some Patent Prosecution. This is a hybrid role requiring at least three regularly scheduled days per week in Rutan’s Irvine CA office and regular working hours of 8:00am to 5:00pm daily. Rutan serves a variety of clients ranging from individuals and start-ups to large publicly-traded companies. Thus, the ability to adapt to the varying needs and levels of sophistication of its clients is paramount. Strong written and verbal communication skills are required, with high attention to detail, accuracy, and the ability to adapt communication styles according to the audience. Applicants should have excellent organizational, analytic, reasoning, and independent problem-solving skills. The position involves significant contact with clients and foreign associates, requiring good judgment and skill at communicating effectively and efficiently. We are an equal opportunity employer and are proud of the diversity of our workforce. Our brand new headquarters at The Boardwalk in Irvine, CA offers state-of-the-art workplace design and technology, and is located in one of the greatest places in the world to live and work – just minutes from some of Southern California’s best beach communities and shopping, and a short drive from both desert and local mountain resort communities JOB FUNCTIONS: Trademarks & Copyrights Prepare and file U.S. and global applications for trademark registration (via the USPTO, Madrid, and foreign associates) as well as ancillary prosecution and post-registration maintenance filings Prepare correspondence to and communicate with clients and foreign associates regarding trademark prosecution and maintenance issues Obtain and handle client instructions with regarding to domestic and foreign trademark matters Communicate instructions to foreign associates for filing and prosecuting foreign trademark applications Coordinate the filing and defending of foreign oppositions and cancelation actions, including managing correspondence with the client and foreign associates, coordinating the gathering of evidence and legalizing documents as needed Review watch notices for conflicts with clients’ trademarks; conduct investigations regarding ownership and use; prepare correspondence to client reporting same; and track all outstanding matters Monitor status of third-party applications involved in enforcement actions and work with attorney and litigation paralegal to ensure filing of oppositions, as required Perform trademark clearance searches Prepare and file applications for registration, responses, and requests for recordation of documents with the U.S. Copyright Office Record IP rights with U.S. Customs and Border Patrol Patents Conduct IP due diligence for domestic and foreign patents Manage and oversee U.S. and foreign patent portfolios Research and prepare cost estimates for filing domestic and foreign patent applications and annuities Prepare and file U.S. patent applications, responses to office actions, requests for extensions of time, petitions, issue fee forms, renewals, and other filings related to U.S. patent prosecution Preparation of client communications directed to domestic and foreign patent prosecution tasks including follow-up to insure completion of the tasks Coordinate execution of declaration, powers of attorney and patent 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 PCT applications, Article 19 & 34 amendments, or other PCT related Correspond with foreign associates to file national patent applications, instruct to pay annuities, and other matters related to foreign patent prosecution/enforcement Review and monitor daily docket, while working with IP docketing department to de-docket actions accordingly Oversee legalization of documents on an as needed basis Maintain client portfolio status reports Maintain and update files in iManage Additional tasks and responsibilities may be assigned or required. General Intellectual Property Draft shell documents related to IP prosecution and enforcement for attorneys Manage docket of deadlines independently, track large number of outstanding issues, and follow up with clients and attorneys accordingly Review and ensure accuracy of docket; coordinate with docketing department as needed Prepare portfolio status reports tailored to the needs of the client Support corporate attorneys in assisting with due diligence reviews of IP-related matters and recordation of transfers of title Manages transfers-in and transfers-out of client IP portfolios Act as point of contact for clients and foreign associates Related assignments and projects as required Work with and supervise administrative support staff as required EDUCATION, SKILLS, AND EXPERIENCE REQUIREMENTS: Must have a minimum of 8 years of IP paralegal and/or senior legal assistant experience handling both patents and trademarks with at least 5 recent years of strong experience handling trademark prosecution for domestic and international patent and trademark portfolios A Paralegal Certificate is strongly preferred Extensive experience communicating with clients, foreign associates and third parties, both orally and in writing Familiarity with USPTO, EUIPO, WIPO, and other foreign trademark databases and online filing portals Knowledge and understanding of domestic and foreign trademark issues, rules, and regulations Proficient with the Microsoft Office Suite (Outlook, Word, Excel) Familiarity with TTAB filing and procedural requirements a plus Excellent organization skills with a high degree of attention to detail Strong written and oral communication skills The ability to prioritize workload, assignments, and client needs The ability to adapt to change, balance competing demands, and function as an integral part of a collaborative team environment Self-motivated, exercise sound judgment, and demonstrate effective planning, independent problem-solving and analytical skills Proficiency in Microsoft Office (Word, Excel and Outlook) is required Experience conducting and analyzing searches of online trademark databases and familiarity with trademark docketing systems are required (experience with FIP a plus) Intellectual Property Paralegal (Trademark & Patent): Annual Salary Range: $95,000 – $105,000 depending on experience If you have the necessary qualifications, please contact Hannah Ackermann (hackermann@rutan.com), Human Resources Supervisor. Rutan & Tucker, LLP is an equal opportunity employer.