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McCarter & English LLP is seeking an IP Specialist for our Hartford, CT office. If you have the appropriate experience, we invite you to consider joining our team. We are looking for a detail-oriented, highly motivated IP Specialist eager to gain hands-on, practical legal experience working for an innovative firm. You will get the opportunity to handle a variety of intellectual property issues as well as assist and interact closely with talented attorneys handling trademark and patent prosecution and portfolio management. You will largely operate independently to prepare correspondence to and communicate with clients regarding upcoming deadlines, prepare and submit electronic filings with the United States Patent & Trademark Office (USPTO), and communicate with foreign law firms to manage trademark and patent filings in foreign countries. You will also use your business acumen, strong work ethic, and excellent communication skills to strengthen relationships with clients and problem-solve in a collaborative environment.
Job Responsibility:
Reviewing client dockets for upcoming deadlines, preparing correspondence to clients notifying them of deadlines and the requirements therefor, and following up with them as needed
Preparing electronic forms for trademark filings in the USPTO, including trademark applications, responses to office actions, extensions, statements of use, declarations of use and incontestability, applications for renewal, and specimens of trademark use
Preparing electronic forms for trademark filings in the World Intellectual Property Office (WIPO), including international applications for registrations and other miscellaneous WIPO filings
Communicating with foreign law firms to provide instructions for filing and prosecuting foreign trademark applications and to address their requests for powers of attorneys and other filing information
Assisting in trademark clearance searches, including conducting searches in the USPTO and Saegis databases
Preparing electronic forms for patent filings in the USPTO, including provisional and utility patent applications, information disclosure statements, and responses to office actions
Preparing formal documents for patent filings in the USPTO, including declarations, powers of attorney, assignments, and other formal documents as required by foreign patent offices
Maintaining and organizing electronic patent and trademark files
Requirements:
Ability to prepare and electronically file trademark and patent documents in the USPTO
2-3 years of intellectual property experience, including using an IP practice management system in a law firm or IP corporate legal department setting
Experience with monitoring patent and trademark dockets
Proficiency with Microsoft Office (e.g. Word and Excel) and billing software(s)
Nice to have:
Ability to handle multiple projects independently, meet deadlines, and be a strong team player as part of a client-oriented team
Strong attention to detail, excellent communication (both written and verbal), organizational and interpersonal skills
What we offer:
Firm-Paid: Basic life and accidental death and dismemberment (AD&D) insurance and short-term (ST) and long-term (LT) disability benefits
Health & Wellness: Comprehensive medical/prescription drug coverage (the Firm pays a share of the cost), including a high deductible health plan with an annual Firm health savings account (HSA) contribution
Employee-Paid Voluntary Benefits: Dental and vision coverage, supplemental health plans (accident, cancer and critical illness), flexible spending accounts, optional life and AD&D insurance (supplemental employee, spouse and child) and supplemental STD coverage
Retirement: 401(k) plan offering three types of contributions: pre-tax, Roth and after-tax contributions
Time Off: Paid Time Off (PTO), paid holidays, and leaves of absence to support work-life balance (e.g. parental leave)
Free and confidential employee assistance program (EAP) and behavioral health services program
Firm-paid back-up child/elder care, academic support and pet care program
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