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 one regularly scheduled day 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.