Essential Job Functions

POSITION OVERVIEW

The Chicago, New York and Bay Area offices are seeking an experienced Technology and IP Transactions paralegal to join its busy practice group. The paralegal work with all of the attorneys on matters from the beginning of a transaction through completion, managing aspects of the Due Diligence process as well as Closing and Post Closing procedures, managing the flow of information, and ensuring adherence to best practices.

• Conduct intellectual property ownership searches within the parameters of the deal.
• Review information memoranda and target company websites for information regarding (i) the target company’s business, (ii) the IP held or used by the target company, (iii) acquisitions and divestitures made by the target company, (iv) important markets and plans to expand into new markets.
• Draft instructions to the Kirkland library on conducting intellectual property searches.
• Develop an understanding of the capabilities and limitations of the patent, trademark, copyright, domain name, and litigation databases used by Kirkland’s library.
• Conduct intellectual property searches on the SAEGIS trademark database, the USPTO and USCO website databases, and website databases maintained by foreign IP offices and WIPO.
• Maintain a good understanding of USPTO trademark and patent rules and procedures and Copyright Office rules and procedures.
• Maintain a working knowledge of foreign trademark and patent law.
• Review and analyze IP search reports, determining current status and ownership of properties, presence of outstanding liens and chain of title issues.
• Review patent and trademark documents recorded at the USPTO and/or conduct web research to aid in analyzing and clarifying chain of title.
• Review file histories of pending U.S. and European trademark and patent applications with respect to continuity of inventorship and to determine how applications relate to one another.
• Review dockets and complaints for active patent and trademark litigation.
• Prepare intellectual property schedules.
• Draft memoranda summarizing types of searches conducted, and contents of target-company’s IP portfolio and issues relating thereto.
• Review and mark up target company IP disclosure schedules, and draft footnotes where needed.
• Resolve discrepancies between target company IP disclosures and K&E search results.
• Assist attorneys in preparing IP closing checklists.
• Draft short-form patent, design, trademark and copyright assignments, security interests, and security interest releases.
• Coordinate confirmatory assignments for foreign trademarks, patents and designs.
• Prepare electronic filings to record changes in ownership for patents and trademarks at the USPTO and paper filings to record changes in ownership for copyrights with the USCO.
• Prepare and file Secretary of State forms for updating ownership of state trademark registrations and trade names.
• Coordinate Apostille certification or consulate legalization for foreign trademark and patent assignments and other title-affecting documents.
• Oversee and manage the process of recording assignments and other title-affecting documents for foreign patents and trademarks.
• Maintain a recordal status chart.
• Instruct and correspond with local counsel regarding recording assignments and other title-affecting documents.

WORK ENVIRONMENT

This job operates in a professional office environment. This role routinely uses standard office equipment such as computers, telephones, photocopiers, and filing cabinets.