What Does An Intellectual Property Paralegal Do?

WHAT DOES AN INTELLECTUAL PROPERTY PARALEGAL DO?

Published: Oct 08, 2025 - The Intellectual Property Paralegal supports all aspects of the IP portfolio by coordinating invention disclosures, managing patent and trademark filings, and facilitating communication between inventors, in-house counsel, and outside counsel. This role involves building and maintaining automated workflows for invention submissions, trademark monitoring, copyright registrations, and IP budget tracking to ensure operational efficiency. The Paralegal also develops IP training programs, administers inventor incentive initiatives, and prepares reports to keep stakeholders informed of portfolio status and prosecution progress.

A Review of Professional Skills and Functions for Intellectual Property Paralegal

1. Intellectual Property Paralegal Overview

Administrative Support: Support attorneys by performing administrative and litigation-related tasks.
File Management: Maintain and organize litigation files to ensure accessibility and accuracy.
Case Preparation: Prepare case notebooks and binders for attorney reference.
Exhibit Coordination: Assemble deposition binders and exhibits in coordination with the legal team.
Document Compilation: Compile documents, evidence, and case law in response to attorney requests.
Record Tracking: Log and track important case documents for efficient case management.
Deposition Assistance: Assist with deposition logistics, including scheduling and material preparation.
Errand Handling: Handle case-related errands such as court deliveries or document filings.
Trial Support: Provide on-site trial and hearing support, including travel.

2. Intellectual Property Paralegal Job Description

Legal Research: Conduct electronic research using legal and intellectual property databases.
Document Drafting: Draft legal documents, correspondence, and pleadings in support of attorneys.
Document Review: Review documents and prepare organized productions for case filings.
Trademark Preparation: Prepare and file trademark applications and perform preliminary clearance searches.
USPTO Assistance: Assist in drafting responses to USPTO Office Actions and TTAB proceedings.
IP Resources Utilization: Utilize USPTO, WIPO, and other online IP resources for research and verification.
Client Communication: Prepare and send professional correspondence and update clients.
Court Filings: File motions and other legal documents in federal and state courts.
Task Compliance: Ensure accuracy, compliance, and timely completion of all IP and litigation-related tasks.

3. Intellectual Property Paralegal Functions

IP Portfolio Management: Support the clearance, prosecution, maintenance, and enforcement of the company’s patent and trademark portfolios, as well as brand protection initiatives.
Process Management: Maintain internal processes and procedures for managing intellectual property information, filings, and deadlines.
Reporting: Prepare, update, and generate reports in Word and Excel, including summaries of pending and registered patents and trademarks.
Docket Management: Ensure accuracy and consistency of docket entries and monitor related deadlines.
Cross-Functional Collaboration: Collaborate cross-functionally with legal, research and development, and brand teams to support IP-related activities.
Document Execution: Obtain signatures on powers of attorney, declarations, and other required documents for submission by outside counsel to patent and trademark offices in the U.S. and abroad.
Domain Management: Register and maintain company domain names to support brand protection and IP strategy.
Legal Drafting: Assist in drafting legal correspondence and documents, including cease and desist letters, declarations, and infringement notices.
IP Investigation: Conduct preliminary and online investigations to identify and assess potential intellectual property infringements.
Administrative Support: Provide general administrative support to the intellectual property department, including managing annuity schedules and processing invoices.

4. Intellectual Property Paralegal Accountabilities

Docket Management: Manage a full docket of patent and trademark deadlines to ensure timely actions.
Reporting: Prepare weekly docket deadline reports and distribute them to assigned attorneys.
Legal Research: Research trademark statutes, rules, and procedures to guide prosecution strategy.
Trademark Analysis: Analyze goods and services descriptions for accuracy, scope, and classification compliance.
Trademark Searching: Conduct USPTO trademark searches for clearance, use, and chain-of-title verification.
Patent Research: Search USPTO patent records to support related diligence and conflicts checks.
Trademark Filing: Draft and file trademark applications, Statements of Use, and Affidavits of Use.
Registration Management: Prepare and submit amendments to registrations, renewal applications, and Office Action responses.
Document Recording: Draft and record declarations, assignments, and appointment or revocation of attorney documents.
Record Maintenance: Maintain organized records of all filings and search results to support ongoing portfolio management.

5. Intellectual Property Paralegal Job Summary

Patent Docket Management: Manage the patent docket and provide deadline reminders to attorneys.
Foreign Coordination: Liaise with foreign agents on filing requirements for prosecution and maintenance.
Patent Tracking: Build and update Patent Status Charts.
Application Preparation: Prepare shells and assist with filing applications, responses, and transmittal documents.
Disclosure Coordination: Coordinate the preparation and submission of Information Disclosure Statements.
E-Filing: E-file patent documents with the USPTO in accordance with procedural rules.
Client Communication: Draft client correspondence on application and patent status.
Annuity Management: Arrange and process patent annuity payments for smaller clients.
Matter Management: Work with the Docket Specialist to open new matters promptly.
Reporting: Produce status and docket reports requested by attorneys and paralegals.
Meeting Leadership: Lead weekly docket meetings in collaboration with the Docket Specialist.
Project Support: Take on substantive tasks and special projects assigned by attorneys.

6. Intellectual Property Paralegal Responsibilities

Patent Docketing Support: Provide patent docketing support by managing mail and email communications with the USPTO, foreign patent offices, global agents, and clients.
Communication Management: Route all communications to the appropriate attorney or paralegal for timely action.
Database Maintenance: Maintain the accuracy and integrity of the intellectual property database.
Deadline Monitoring: Monitor due dates and ensure all deadlines are consistently met.
Annuity Verification: Verify that all patent annuity payments are processed and recorded.
Document Filing: Prepare and file patent prosecution documents with the USPTO and international offices, including PCT filings, missing parts responses, IDS, and assignments.
Attorney Assistance: Assist attorneys with filing formal office action responses and related documentation.
Invoice Review: Review and approve invoices from foreign agents and vendors.
IP Transactions: Support acquisition and divestiture activities involving IP assets.
Operational Support: Contribute to special projects and perform other duties to support IP operations.

7. Intellectual Property Paralegal Details

Case Management: Set up and manage case files to ensure proper organization and accessibility.
Client Communication: Coordinate and communicate effectively with clients regarding intellectual property matters.
Clearance Support: Assist attorneys with initial clearance searches and prepare draft template letters for attorney review.
Docket Management: Organize and maintain all dockets across company platforms to track filings, deadlines, and case progress.
Attorney Support: Provide general attorney support, including scheduling, filing, compiling, analyzing, proofreading, reproducing, and distributing correspondence.
IP Research: Stay informed on global intellectual property trends, brand protection strategies, and enforcement developments.
Trademark Prosecution: Manage the firm’s global trademark prosecution practice, coordinating with international counsel to ensure timely filings and responses.
Copyright Filing: Prepare and file copyright applications with the U.S. Copyright Office.
Timeline Management: Manage timelines, schedules, and response deadlines for the firm’s intellectual property portfolio to ensure all matters progress efficiently.
Case Monitoring: Monitor ongoing cases and take proactive steps to keep them moving forward.
Attorney Coordination: Coordinate with supervising attorneys to ensure assignments are completed accurately and efficiently.
Patent Collaboration: Collaborate with outside patent counsel to maintain schedules, manage communications, and align client expectations.

8. Intellectual Property Paralegal Duties

Trademark Portfolio Management: Manage international trademark portfolios and collaborate with foreign counsel on filings, renewals, oppositions, and enforcement actions.
Outside Counsel Oversight: Oversee relationships with outside counsel handling the company’s trademark portfolio, ensuring strategies align with overall business and legal objectives.
Corporate Compliance: Coordinate with registered agents to manage annual corporate filings and maintain compliance for all related entities.
IP Litigation Support: Support intellectual property counsel in oppositions, cancellations, and other IP litigation matters.
Infringement Research: Research potential infringement cases and coordinate with outside counsel to develop and implement strategic responses.
Marketing Review: Review and evaluate advertising and marketing materials to ensure proper trademark usage, brand consistency, and claim accuracy.
Real Estate Support: Assist legal leadership with real estate matters, including reviewing leases, purchase agreements, and other property-related documents.
Project Coordination: Coordinate and oversee real estate dispositions and related projects to ensure timely execution and compliance with contractual and regulatory requirements.
License Management: Manage the application and renewal process for gaming licenses to maintain full regulatory compliance.
Process Improvement: Continuously assess and refine intellectual property and real estate processes to enhance operational efficiency.
Contract Management: Review and manage contracts and transactions related to trademark prosecution, defense, and commercial agreements.

9. Intellectual Property Paralegal Details and Accountabilities

Trademark Filings: Perform all trademark exemplar filings with the USPTO and international trademark offices.
Copyright Management: File copyright applications with the U.S. Copyright Office for all current packaging/products and new Fall/Spring products, and track all registration grants.
Patent Marking Compliance: Ensure the accuracy of all virtual patent markings across product lines.
Product Linking: Link every package/product by SKU to the corresponding product page on jakks.net.
Patent Verification: Verify that all patented products are properly marked with jakks.com/patents.
Patent Listing Maintenance: Maintain an up-to-date and accurate patent listing at jakks.com/patents.
Trademark Research: Conduct preliminary knockout trademark searches using CoreSearch.
Docketing System Management: Continuously update Symphony, the trademark and patent docketing system.
Competitor Monitoring: Distribute weekly competitor trademark watch files to marketing teams.
Program Management: Manage the VJT program to protect patent and trademark rights.
Litigation Support: Assist with intellectual property and other litigation matters.
Departmental Support: Perform additional legal department duties.

10. Intellectual Property Paralegal Tasks

Patent Support: Provide comprehensive support for all patent-related activities, including managing the group mailbox and handling incoming requests.
Matter Management: Open and close patent matters, instruct outside counsel on new filings, and order patent searches.
Reporting and Recognition: Run Anaqua reports, create Inventor profiles, and process Inventor awards and patent plaques.
Attorney and Inventor Support: Offer general support to inventors and attorneys, including assistance with docketing and calendar management.
Counsel Collaboration: Collaborate directly with outside counsel, in-house counsel, and inventors to ensure smooth coordination of patent processes.
Trademark Management: Maintain the trademark docket and coordinate responses with counsel and marketing teams.
Trademark Administration: Order trademark searches, manage renewals, and review watch notices for potential conflicts.
Contract Support: Support contract management activities, including NDAs, IP agreements, and other administrative documentation.
Contract Negotiation Assistance: Assist with limited contract negotiations and liaise with clients and third parties on agreement-related matters.
Document Review: Review, verify, and route correspondence, reports, and legal documents for attorney approval.
Deadline Monitoring: Monitor docket reports, deadlines, and due diligence tasks to ensure timely completion.
Attorney Representation: Represent attorneys by obtaining information, following up on assignments, and determining when to take independent action or escalate issues.

11. Intellectual Property Paralegal Roles

Legal Research: Conduct legal filings and research in District Courts using PACER and other authorized legal research platforms.
Evidence Analysis: Collect, review, and analyze evidence of trademark use, registrations, and third-party references.
Conflict Research: Research third-party usage of similar marks, goods, or services to assess potential conflicts and risks.
Infringement Investigation: Investigate potential infringers, targets, and adversaries to support enforcement and litigation strategies.
Takedown Management: Draft and submit takedown notices for intellectual property violations across social media and e-commerce platforms.
File Management: Maintain and organize legal files, case materials, and supporting documentation for active matters.
Docket Management: Manage docketing systems to monitor key deadlines, attorney reminders, and case milestones.
Document Coordination: Coordinate affidavits and ensure all legal documents are properly formatted, proofread, and finalized before submission.
Attorney Support: Assist attorneys by compiling research materials, exhibits, and case-related data for proceedings.
Compliance Oversight: Ensure all filings, correspondence, and case management activities comply with firm policies and court procedural standards.

12. Intellectual Property Paralegal Additional Details

Attorney Support: Support multiple intellectual property attorneys in delivering high-quality service to clients.
Patent Filing: Prepare and file patent applications and related legal responses promptly.
Application Drafting: Draft U.S., provisional, non-provisional, convention, and design application documents, including transmittals, Application Data Sheets, and drawings.
Docket Management: Review and maintain the docket to ensure prompt reporting of communications to clients and foreign associates.
Prosecution Management: Handle various prosecution formalities efficiently to meet procedural deadlines.
Formality Preparation: Prepare formality documents for national filings, including Powers of Attorney, assignments, and inventor declarations.
Document Legalization: Coordinate document legalization processes and order priority documents or assignments from the USPTO.
Foreign Coordination: Obtain foreign priority documents and ensure accurate submission.
Allowance Review: Review Notices of Allowance, prepare corresponding checklists, and report updates to clients.
Performance Compliance: Consistently meet or exceed the firm’s annual billable hour requirement, including approved non-billable time.

13. Intellectual Property Paralegal Essential Functions

IP Portfolio Management: Oversee and manage the company’s global patent, trademark, and copyright portfolios under the guidance of intellectual property attorneys.
Cross-Functional Collaboration: Collaborate with internal legal, technical, and business stakeholders to support strategic decisions throughout the patent lifecycle.
Copyright Review: Review products, websites, and software platforms to identify and recommend potential copyright filings.
Budget Support: Assist attorneys in preparing cost analyses, forecasts, and reports for annual intellectual property budgets.
Enforcement Research: Conduct research and provide support for enforcement actions related to intellectual property protection.
Document Filing: Prepare and file intellectual property documents with relevant patent, trademark, and copyright authorities.
Rights Maintenance: Manage prosecution, maintenance, and renewal of IP rights, including office action responses, recordals, assignments, and ownership transfers.
Deadline Coordination: Coordinate with outside counsel and internal teams to monitor deadlines, maintain docket accuracy, and generate portfolio reports.
Data Compilation: Compile data to support portfolio reviews, maintenance filings, annuity payments, and renewals.
Vendor Coordination: Work with vendors to request and process patent and trademark searches and organize corresponding results.
Compliance Management: Ensure all intellectual property documentation, records, and reports adhere to company standards for accuracy and compliance.

14. Intellectual Property Paralegal Role Purpose

External Communication: Correspond with outside law firms regarding worldwide patent and trademark filings to ensure timely communication and accurate case management.
Database Management: Enter and maintain patent and trademark information in the IP database, perform docketing activities, and generate detailed reports.
Document Archiving: Archive and organize intellectual property documents to ensure secure and efficient retrieval.
Formalities Management: Gather signatures for IP-related documents, manage notarization, and ensure compliance with formal requirements.
Annuity Oversight: Oversee IP annuity payments and maintenance fee management to protect global intellectual property rights.
Budget Management: Manage IP budgeting activities, including reviewing and approving invoices from outside counsel and vendors.
Licensing Administration: Administer responsibilities related to IP licensing, including tracking agreements, renewals, and compliance obligations.
Contract Processing: Process contract requests, manage execution workflows, and ensure timely completion and proper documentation.
Template Maintenance: Maintain up-to-date contract templates, executed copies, and a comprehensive contract log for reference and audit purposes.
Training and Guidance: Provide contract process training and guidance to internal clients to ensure adherence to company standards.
Departmental Support: Support additional in-house intellectual property service needs, contributing to overall departmental efficiency and compliance.

15. Intellectual Property Paralegal General Responsibilities

IP Collaboration: Collaborate closely with engineers and cross-functional teams to identify, develop, and protect the company’s intellectual property assets.
Invention Management: Lead invention identification meetings, review invention disclosures to determine appropriate IP actions, and facilitate detailed invention disclosure discussions.
Portfolio Oversight: Manage a substantial portfolio of inventions and international patents within designated technology areas, ensuring strategic alignment with business goals.
Counsel Supervision: Oversee and direct outside counsel and foreign associates by providing instructions, reviewing drafts, and performing substantive spot-drafting and quality reviews.
IP Counseling: Counsel the company on matters related to patents, trade secrets, and overall IP strategy to support innovation and risk management.
Comprehensive IP Advice: Advise on additional intellectual property issues, including copyrights, open source software, trademarks, and design rights.
Transactional Support: Support IP-related due diligence, transactional activities, licensing negotiations, and litigation.
Project Leadership: Lead or contribute to special projects such as enhancing inventor remuneration programs, developing and maintaining IP-related agreements, and improving IP infrastructure, processes, and systems.
Patent Prosecution: Assist in the preparation and prosecution of design patent applications, including conducting litigation-related research and summarizing findings.
Portfolio Coordination: Coordinate portfolio transfers with internal teams, clients, and outside counsel to ensure smooth transitions and accurate updates to records.

16. Intellectual Property & Product Paralegal Key Accountabilities

Portfolio Management: Manage the company’s global patent and trademark portfolios, ensuring timely filings, maintenance, and renewals.
Invention Tracking: Track invention mining, harvesting activities, and the progression of new patent applications.
Counsel Coordination: Coordinate meetings between inventors and outside counsel to support patent drafting and responses to office actions.
Document Preparation: Review, draft, and negotiate standard documents related to product and intellectual property matters, including cease and desist letters for trademark enforcement.
Inbox Management: Monitor and manage the Product and IP group inbox to ensure prompt handling of inquiries and correspondence.
Outside Counsel Management: Assist in managing outside counsel relationships, including tracking budgets, monitoring spending, and ensuring cost efficiency.
Regulatory Support: Support regulatory compliance efforts by collecting, organizing, and maintaining required documents and supporting materials from internal and external sources.
Process Improvement: Develop, implement, and improve operational processes and systems related to intellectual property, product development, and regulatory matters.
Resource Oversight: Oversee and maintain self-service tools and legal resources to support business and legal teams.
Technology Optimization: Collaborate with the Legal Operations team to optimize the use of technology tools within the Legal Department.
Project Participation: Initiate and participate in departmental projects, identifying opportunities to enhance efficiency and support broader organizational goals.
Administrative Support: Provide administrative and operational support to the Legal Department to ensure smooth execution of daily activities.

17. Intellectual Property Paralegal Roles and Details

Data Management: Manage and organize all information and data related to the company’s patents and trademarks, ensuring accuracy and accessibility.
Counsel Coordination: Coordinate with outside counsel to obtain portfolio updates and docket reports while maintaining and updating the internal intellectual property database.
Invention Management: Collaborate with company inventors to manage invention disclosures and oversee their progress through the full internal evaluation workflow.
Meeting Coordination: Coordinate regular patent council review sessions, invention harvesting meetings, inventor interviews, and intellectual property training programs.
Fee Management: Ensure timely payment of maintenance and annuity fees by working closely with external vendors and outside counsel.
Reporting: Prepare and present intellectual property metrics reports for the Executive IP Council.
Filing Support: Coordinate with outside counsel and internal stakeholders to complete formalities related to patent and trademark filings, including the collection and execution of required documents.
Incentive Program Administration: Administer and manage the company’s inventor incentive program, ensuring recognition for innovation contributions.
Litigation Support: Provide support for intellectual property conflict resolution and litigation matters.
Educational Support: Assist in the preparation of educational materials, presentations, and other legal-related work products for internal use.
Process Development: Contribute to the development and implementation of departmental initiatives, including improving patent and trademark support technologies, processes, and templates.

18. Senior Intellectual Property Paralegal Responsibilities and Key Tasks

Patent Filing: File patent applications and prepare and submit all associated documents while managing prosecution throughout the life cycle of each application.
Document Execution: Obtain signatures for required documents and oversee notarization and legalization processes.
Correspondence Review: Review correspondence and documentation received from outside counsel and the USPTO for accuracy and completeness.
File Management: Maintain organized electronic files and appropriately de-docket completed actions.
Docketing: Perform docketing of deadlines based on correspondence from outside counsel and the USPTO, ensuring all tasks are accurately tracked and updated.
System Monitoring: Monitor and routinely update docketing systems to reflect current case statuses.
Reporting: Generate due date reports and summaries for attorney review and follow-up.
Portfolio Reporting: Produce various reports from the docketing system to support portfolio management and case monitoring.
Counsel Liaison: Liaise with outside counsel on a range of patent prosecution and administrative matters.
Contract Support: Assist with the maintenance and searching of the contract database to identify relevant agreements and upload contracts as requested by attorneys.
Matter Creation: Create and open new docket matters in both docketing and billing systems to ensure accurate tracking of work and related costs.
Invoice Processing: Review and process incoming invoices from outside counsel and vendors for approval or rejection.
Administrative Support: Assist with special projects and perform additional administrative tasks to support the intellectual property and legal departments.

19. Intellectual Property Paralegal Duties and Roles

Trademark Administration: Oversee and manage the administration of the company’s global trademark portfolio, including conducting availability searches and handling ownership assignments.
Trademark Filings: Prepare and file trademark transfer documents and assist attorneys with opposition, cancellation, and litigation proceedings.
Copyright Management: Manage copyright protection and maintenance activities for products, websites, and software platforms.
Creative Review: Review creative materials to identify works requiring copyright filings and prepare and submit registration applications.
Infringement Research: Research potential infringement issues and draft cease and desist letters to safeguard intellectual property rights.
Document Filing: Prepare and file intellectual property documents with relevant authorities, including new applications, office action responses, and recordals.
Deadline Coordination: Coordinate with outside counsel and internal teams to monitor deadlines and ensure the accuracy of docket entries.
Portfolio Reporting: Generate and review portfolio and docket reports while participating in regular docket meetings to maintain oversight of active matters.
Data Compilation: Compile data to support portfolio reviews, annuity payments, maintenance filings, and renewals.
Vendor Collaboration: Collaborate with vendors and team members to request intellectual property searches and process search results efficiently.
Record Management: Create and maintain electronic IP records, upload correspondence, and manage new matter entries in internal databases.
Archiving Oversight: Oversee document organization, archiving, and destruction in accordance with established record retention policies.

20. Intellectual Property Paralegal Roles and Responsibilities

Docket Management: Manage a comprehensive docket of patent and trademark-related deadlines, send timely reminders to clients and attorneys, and ensure all deadlines are met by collecting necessary information and instructions.
Trademark Filing: Prepare and file U.S. and Madrid trademark applications, declarations, renewals, extensions of time, and other filings with the USPTO.
Patent Filing: Prepare and file U.S. provisional, non-provisional, convention, and design patent application documents, as well as PCT and Hague applications, including application data sheets, declarations, and related documentation.
Disclosure Management: Prepare and submit Information Disclosure Statements (IDS), including obtaining copies of foreign references and machine translations.
Office Action Support: Assist in the preparation and filing of responses to patent and trademark office actions in collaboration with attorneys.
Recordation Management: Record documents such as assignments, name changes, and lien releases with the USPTO, while maintaining a clear understanding of chain-of-title issues and ensuring they are perfected accurately.
TTAB Filings: File documents with the Trademark Trial and Appeal Board (TTAB) and prepare non-substantive procedural filings.
Foreign Counsel Coordination: Instruct and oversee foreign counsel managing patent and trademark prosecution and enforcement matters, coordinating the preparation, execution, notarization, legalization, and apostille of required documents.
Portfolio Reporting: Generate customized patent and trademark record reports for clients, ensuring clarity and up-to-date portfolio information.
Due Diligence Support: Support due diligence activities related to patents and trademarks in mergers, acquisitions, and other corporate transactions.

21. Intellectual Property Paralegal Overview

Portfolio Administration: Direct the administrative aspects of assigned patent and trademark portfolios.
M&A IP Management: Track and administer intellectual property reviews related to merger, acquisition, and divestiture matters.
Invention Disclosure Review: Review invention disclosures to ensure proper handling and alignment with specific business units.
Database Management: Manage database systems for maintaining agreements, patents, and trademarks associated with assigned product line portfolios and corporate transactions.
Filing Management: Docket and ensure timely filing of assigned patent and trademark applications, including responses to office actions.
Counsel Coordination: Prepare required documentation and communicate with U.S. and non-U.S. counsel, as well as technical representatives, regarding worldwide patent and trademark filings, prosecutions, and IP reviews for merger, acquisition, and divestiture activities.
Search Analysis: Perform and analyze computer database searches for patents and trademarks.
Deadline Compliance: Ensure full compliance with all docketed deadline dates and procedural requirements.
Committee Support: Prepare patent committee meeting agendas, assemble and distribute committee materials, assist during meetings, and complete assigned action items.
Search Coordination: Order and coordinate title and state-of-the-art searches and oversee related activities.
Fee Management: Manage and analyze annuity and maintenance fee payments for assigned portfolios.

22. Intellectual Property Paralegal Job Description

Domain Portfolio Management: Manage a global domain name portfolio comprising several thousand names across both gTLDs and ccTLDs.
Domain Operations: Handle domain registration, renewal, and transfer processes while obtaining and maintaining SSL certificates, establishing redirects, and collaborating with the cybersecurity team on domain-related security matters.
Policy Representation: Represent the intellectual property team in company-wide policy discussions related to domain names and digital asset management.
Enforcement Support: Support intellectual property enforcement activities, including anti-cybersquatting, anti-counterfeiting, and trademark and copyright protection, while coordinating with dispute resolution providers, customs authorities, brand protection vendors, and online marketplaces.
Budget Management: Assist with managing and tracking budgets, accruals, and administrative setup for new matters and vendors, including monitoring outside counsel billing and invoice processing.
Trademark and Copyright Support: Support the preparation, filing, prosecution, and maintenance of U.S. and international trademark and copyright applications.
Docket Management: Manage docketing systems and databases to track intellectual property and domain-related activities accurately.
Communication Coordination: Coordinate communications among attorneys, internal stakeholders (including marketing and product development teams), and external counsel.
Trademark Oversight: Conduct trademark searches, review trademark watch notices, and oversee domain name registrations.
Reporting and Analysis: Generate and analyze reports from internal databases to support portfolio management and strategic decision-making.

23. Intellectual Property Paralegal Functions

Trademark Prosecution: Oversee and facilitate the prosecution of U.S. and foreign trademark portfolios in collaboration with outside counsel.
Portfolio Management: Manage the company’s trademark portfolio and associated deadlines using the FoundationIP system.
Team Coordination: Coordinate with in-house marketing, business, and management teams on trademark usage, new filings, and reporting requirements.
Watch Notice Evaluation: Evaluate trademark watch notices and domain alerts, providing recommendations to intellectual property attorneys.
Clearance Research: Conduct and assist with trademark clearance searches for new brand initiatives.
Copyright Support: Support copyright-related tasks, including filings, research, and preparation of takedown letters.
Litigation Support: Provide litigation support for trademark oppositions, cancellations, and patent litigation matters.
Patent Assistance: Assist with patent prosecution overflow and other intellectual property projects.
Document Legalization: Coordinate legalization and certification of international documents for use in foreign proceedings.
System Development: Help develop and maintain internal IP databases, workflows, and tools to enhance efficiency.
Corporate Collaboration: Collaborate on corporate legal projects involving subsidiaries and administrative legal needs.
Communication Management: Ensure consistent communication and alignment across internal legal and business teams.

24. Intellectual Property Paralegal Accountabilities

Document Preparation: Prepare, process, and obtain signatures for formal patent and trademark documents such as Declarations, Powers of Attorney, and Assignments.
Filing Compliance: Ensure all filings meet the requirements of both U.S. and foreign jurisdictions.
Litigation Support: Support IP litigation by coordinating e-discovery, managing legal holds, and assisting with subpoena responses.
Case Tracking: Track the progress of pending litigation and maintain internal case files.
Agreement Management: Assist in drafting and managing IP-related agreements, including consulting, confidentiality, material transfer, and sponsored research contracts.
Matter Administration: Open new IP matters, process vendor purchase orders, and maintain organized paper and electronic filing systems.
Procedure Development: Develop and refine departmental procedures and guidelines to improve operational efficiency.
Legal Filing: Prepare and electronically file legal documents and handle procedural communications with the USPTO.
Stakeholder Coordination: Collaborate with internal stakeholders and external counsel to ensure seamless coordination of IP activities.
Training and Analysis: Provide training on IP procedures and conduct independent analyses to identify and resolve process gaps.
Process Improvement: Implement process improvements to strengthen compliance and performance across the IP department.
Departmental Support: Assist with miscellaneous IP department-related projects and duties.

25. Intellectual Property Paralegal Job Summary

Invention Management: Develop and assist in the invention disclosure process by tracking invention mining, harvesting, and new patent filings.
Patent Coordination: Collaborate with Gemini’s IP counsel and outside counsel to manage patent application drafting and prosecution workflows.
Inventor Collaboration: Coordinate with inventors to gather requested information and secure completion of formal documents.
Incentive Program Management: Design, launch, and administer an inventor incentive awards program, scaling to full ownership over time.
Workflow Automation: Build and implement automated workflows for invention submission, copyright registration, trademark monitoring, and related IP tasks.
Budget Management: Develop, update, and track IP budget projections and manage the invoice review process.
Training and Awareness: Create and execute IP training and awareness plans across the company.
Trademark Research: Conduct and analyze global trademark searches with IP counsel to assess the availability of marks, taglines, product names, and logos.
Specimen Management: Build and maintain a global catalog of trademark specimens of use across fields and jurisdictions.
Opposition Coordination: Collaborate with IP counsel and outside counsel to manage trademark oppositions and cancellations, including reviewing watch notices and gathering evidence.
Copyright Registration: Manage end-to-end processes for registering copyrights.
Inbox Monitoring: Monitor the IP team inbox for potential trademark or copyright infringement issues and triage appropriately.
Reporting: Prepare concise reports and status updates to keep stakeholders informed on prosecution progress and portfolio health.

26. Intellectual Property Paralegal Responsibilities

Brand Protection: Coordinate and implement global brand protection strategies in collaboration with intellectual property attorneys and business stakeholders.
Cross-Functional Collaboration: Develop and maintain strong, collaborative relationships with teams across marketing, sales, communications, quality, procurement, and global security.
Anti-Counterfeiting Support: Support anti-counterfeiting enforcement initiatives by coordinating and implementing actions with the responsible legal and enforcement teams.
Litigation Coordination: Provide coordination and implementation support for intellectual property litigation matters under the guidance of IP attorneys.
Contract Facilitation: Facilitate the drafting and negotiation of contracts, including confidentiality agreements, material transfer agreements, and research agreements for the R&D department.
Training Support: Assist IP attorneys in developing and delivering intellectual property innovation and enforcement training for business clients.
Patent Marking Compliance: Support biannual reviews and updates of virtual patent marking (VPM) systems to ensure compliance and accuracy.
Data Integrity Management: Monitor, audit, and improve data integrity within contract and intellectual property management software platforms.
Financial Coordination: Coordinate with IP legal team members to manage payment obligations for intellectual property assets and support related financial processes.
Budget Planning: Assist with forecasting and budget planning activities in collaboration with the IP and finance teams.
Invoice Management: Facilitate, manage, and oversee IP invoicing processes to ensure accuracy and timeliness.
Financial Collaboration: Maintain strong relationships with tax and accounting teams to support financial compliance and reporting requirements.
Royalty Management: Coordinate with tax and accounting departments to manage patent-related royalty payments effectively.
System Oversight: Monitor and enhance data integrity within financial management systems to ensure reliable reporting and transparency.

27. Intellectual Property Paralegal Details

Portfolio Management: Work closely with in-house counsel and outside intellectual property counsel to manage the company’s global trademark, copyright, domain name, and patent portfolios, gathering internal information and documents to support trademark applications and opposition or cancellation proceedings.
Trademark Research: Conduct and analyze U.S. and international trademark searches to evaluate mark availability and prepare draft clearance reports for attorney review.
Application Filing: Prepare and file trademark applications and related submissions via the Trademark Electronic Application System (TEAS), including filings under the Madrid Protocol.
Prosecution Management: Handle the day-to-day prosecution of domestic and foreign trademark and copyright applications based on attorney direction.
Document Preparation: Assist in reviewing and finalizing legal documents for signature, including declarations, powers of attorney, and supporting documentation.
Watch Notice Review: Review and analyze trademark watch notices, preparing concise reports for attorney review and follow-up action.
Litigation Support: Support intellectual property litigation by collecting and organizing relevant information and documents for discovery responses.
Content Review: Review product packaging, promotional materials, and marketing content for proper trademark and copyright usage.
Database Management: Organize and manage large volumes of case-related information by entering and maintaining accurate data in intellectual property enforcement and investigation databases.
Coordination: Coordinate with outside law firms, vendors, and internal business teams to ensure effective handling of prosecution, enforcement, and compliance matters.
Administrative Support: Provide general administrative and project support, including preparing expense reports, processing mail, scheduling meetings and conference calls, editing and formatting documents, proofreading, managing office supplies, and scanning or filing records.

28. Intellectual Property Paralegal Duties

Process Development: Work closely with PID IP attorneys to develop, implement, and maintain matter management and docketing processes, procedures, and policies for invention disclosures, patents, patent applications, and trademarks, ensuring regular workflow clearance.
Budget Management: Assist in tracking and maintaining the IP budget by managing expenses, invoices, billing matters, and annuity payments.
Data Reporting: Extract data from patent, trademark, and general matter databases to prepare detailed reports that support docket management and provide insight into the company’s IP portfolio value.
Committee Coordination: Prepare, track, and manage IP committee meeting agendas and actions by assembling and distributing materials, recording minutes, and following up on assigned action items.
Invention Collaboration: Collaborate with inventors to identify and capture innovations for IP review and potential filings.
Counsel Coordination: Interact with U.S. and international outside counsel to coordinate prosecution, filings, and enforcement activities.
Incentive Program Management: Administer and track inventor awards programs to recognize internal innovation contributions.
Policy Communication: Work with other departments to communicate and ensure understanding of patent and trademark policies, providing guidance and addressing employee inquiries.
Filing Coordination: Coordinate and file communications with the USPTO and foreign patent and trademark offices, ensuring compliance with procedural requirements.
Patent Review: Review newly granted patents for errors and initiate correction requests.
Competitive Analysis: Contribute to competitive landscape analyses and track industry patent activity to inform strategic decision-making.
Litigation Support: Support litigation, opposition, and enforcement matters by docketing deadlines and assisting with document collection and production.

29. Intellectual Property Paralegal Details and Accountabilities

System Implementation: Lead the identification, procurement, and implementation of an electronic docketing system to strengthen and support the company’s internal intellectual property (IP) operations.
Data Migration: Collaborate with outside counsel to secure and migrate legacy patent records into the newly adopted docketing system.
Database Maintenance: Maintain and update electronic patent and trademark databases by entering new data, analyzing reports, identifying discrepancies or gaps, and resolving any detected errors.
Deadline Monitoring: Monitor all intellectual property deadlines and generate comprehensive docket reports for attorneys and patent status updates for business partners.
File Management: Save and maintain electronic patent, trademark, and copyright files in the company’s document management system using standardized naming conventions.
Communication Processing: Process and organize incoming email communications promptly to ensure the IP database and electronic files remain accurate and up to date.
Information Retrieval: Independently retrieve information from internal databases, outside counsel, or staff to support business and legal needs.
Reporting: Generate polished IP data reports used to inform portfolio management decisions, including new application filings, convention and national phase deadlines, European validations, and annuity or maintenance schedules.
Presentation Preparation: Prepare IP PowerPoint presentations and visual reports for cross-functional IP meetings.
Document Coordination: Collaborate with external counsel, staff, and internal business partners to execute formal documents required for patentability, enforcement, and trademark registration, including assignments, declarations, and powers of attorney.
Invention Intake Management: Manage invention disclosure intake by reviewing submissions and assigning them to the appropriate attorney for evaluation.
Fee Oversight: Oversee annuity and maintenance fee schedules and ensure timely payments to maintain portfolio integrity.

30. Intellectual Property Paralegal Essential Functions

Filing Preparation: Prepare all necessary documentation for patent and trademark filings, including reviewing new applications (continuations, divisionals, and continuations-in-part) and assembling filing materials such as utility and fee transmittals, application data sheets, and requests for non-publication across various jurisdictions.
Document Filing: Upload and file all applications, amendments, issuances, assignments, maintenance documents, and related materials with accuracy and timeliness.
Disclosure Management: Prepare Information Disclosure Statements by maintaining comprehensive cross-citation schedules, identifying relevant prior art, and obtaining foreign references, publications, and translations of non-English materials.
PCT Coordination: Manage national phase entries of PCT applications and prepare and file all continuing applications.
Foreign Communication: Communicate with foreign associates on intellectual property matters, review correspondence, evaluate next steps, and prepare instruction letters or responses.
Database Research: Conduct database and patent office searches to verify the status of pending applications, issued patents, registered trademarks, re-examinations, maintenance fee payments, expiration calculations, office action timelines, and recorded assignments.
Research Analysis: Use professional research platforms such as Espacenet, WIPO, the Copyright Office, Courtlink, INPADOC, LexisNexis, PACER, Derwent Innovation, and SAEGIS to perform comprehensive intellectual property research and due diligence.
Patent Analysis: Carry out advanced online searches in industry databases to analyze patents and trademarks, summarizing and updating findings.
Docket Monitoring: Monitor docket deadlines, track case progress, and notify attorneys of required filings, actions, or updates.
Client Communication: Draft correspondence to clients regarding the status of applications and patents, including filing receipts, publication notices, and issued Letters Patent.
Fee Processing: Process and confirm payments of issue fees and verify the completion of related transactions.
Ownership Tracking: Track and ensure proper ownership and assignment documentation to maintain an accurate chain of title for patents.

Relevant Information

What Does An Intellectual Property Manager Do?

What Does An Intellectual Property Counsel Do?