Intellectual Property Specialist

Company:  Lewis Brisbois
Location: Fort Lauderdale
Hours: Full Time
Type: Permanent
Job Requirements / Description
Through formal education, training and experience, paralegals are expected to have knowledge and expertise regarding the legal system and substantive and procedural law which qualify them to do work of a legal nature under the supervision of an attorney. The paralegal will perform a broad range of Intellectual Property related duties from case inception to conclusion, all under the supervision of an attorney. This is a full-time position working 37.5 hours per week. We offer a competitive salary and benefits package including a 401K with employer contribution.

The following list of essential functions is not exhaustive and other duties may be assigned in addition to those listed. The items listed are considered daily functions associated with this position: 

Work hand-in-hand with attorneys on Intellectual Property prosecution planning, development and management of a patent prosecution docket.

Coordinate and communicate with clients and foreign associates regarding patent prosecution.

Manage a full docket of patent deadlines, send timely reminders, and ensure that deadlines are handled.

Prepare and file U.S. provisional, non-provisional, convention and design patent application documents and PCT and Hague applications, along with related application data sheets, declarations, and other documents.

Prepare and file information disclosure statements, including obtaining copies of foreign references and machine translations.

Assist with preparation and filing of responses to patent and trademark office actions.

Record documents such as assignments, name changes, and lien releases with the USPTO and comprehend chain of title issues and ability to perfect same.

Supervise patent and trademark prosecution and trademark enforcement matters handled by foreign law firms and coordinate the preparation, execution, notarization, legalization, and apostille of documents filed with foreign patent and trademark offices.

Create customized patent and trademark records reports for clients.

Qualified candidates will meet the following criteria:


• 2+ years of patent prosecution experience and be able to work independently.

• Must have experience assisting in initial drafting and filing and prosecution of patent documents, communicating with the PTO and and maintaining clients' domestic and international intellectual property portfolios.

• Must be proficient in using the PTO's online filing systems such as PAIR, EFS Web, Patent Center, Global Dossier, ePCT, WIPO IP Portal

• Experience with CPI trademark software preferred.

• Must possess excellent oral and written communication skills, be detail-oriented, and have the ability to manage multiple priorities and track extensive details.


The candidate will be responsible for assisting with all facets of the patent prosecution process. Although the candidate’s primary responsibilities will relate to patents, experience with trademark prosecution is a plus.

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