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Technology & IP Transactions Paralegal

Job ID: 4686

Updated: Jul 30, 2018

Location: Palo Alto, CA, United States

Category: Paralegal


About Kirkland & Ellis

Kirkland & Ellis LLP is a preeminent, full-service law firm with offices around the world and a staff as diverse as the practice areas we support. Our clients range from Fortune 100 companies to medium and small corporations, financial institutions, and private equity firms.  Known for our commitment to excellence, Kirkland strives to provide superior service to our clients as well as our fellow employees. From Information Technology to Human Resources, Paralegal Services to Business Development, Kirkland offers non-attorney professionals challenging careers in a variety of functional areas. Whether starting or growing your career, Kirkland can offer a performance-driven culture filled with bright and innovative teams of co-workers.

Essential Job Functions

Our team is seeking an experienced Technology and IP Transactions Paralegal to join its busy practice group. Along with other members for the team, this Paralegal will be responsible for the following tasks:

  • Order searches on a company’s IP holdings (registered trademarks, patents, registered copyrights, domain names) and IP-related litigation
  • Conduct additional searches on a company’s IP holdings on US Patent and Trademark Office (“USPTO”) and U.S. Copyright Office website databases, foreign IP office website databases, and the SAEGIS trademark database.
  • Discuss and develop search strategies to limit costs and/or find relevant IP in a carve-out situation
  • Assist attorneys in preparing cost estimates for running IP ownership searches and for recording IP assignments
  • Review information memoranda and company website(s) for company background and IP information/usage
  • Research company background on the internet
  • Analyze IP search results
  • Analyze chain of title information for trademarks, patents and copyrights (global)
  • Create schedules of company-owned IP
  • Draft memoranda summarizing IP search results and discuss issues relating to a company’s IP portfolio
  • Assist attorneys in reviewing data room materials for documentation regarding registered trademarks, patents, copyrights and domain names
  • Order file wrappers, copies of recorded assignments and security interests, and title documents recorded at government offices
  • Contact foreign associates to run IP ownership searches in their respective countries
  • Compare company disclosure schedules against K&E schedules and summarize discrepancies
  • Draft IP assignments and IP security agreements and releases
  • Review executed IP assignments to ensure they are properly executed, notarized, stamped, witnessed, etc.
  • Prepare recordation cover sheets or electronic filings for documents to be recorded at USPTO or Copyright Office
  • Record documents at the USPTO or Copyright Office
  • Arrange for legalization (by consulate or by Apostille) of assignments for recording in foreign trademark and patent offices
  • Draft instruction letters to foreign associates regarding recording assignments in their countries
  • Correspond with foreign associates and communicate with seller’s and buyer’s IP counsel or in-house contact to obtain necessary documents and information for recording assignments
  • Maintain status chart of international recordings
  • Maintain a network of foreign associate contacts
  • Keep client apprised of status of recording process and forward filing receipts and notices of recordation to client or client IP counsel
  • Participate in conference calls regarding information about registered IP

Qualifications & Requirements

A Paralegal professional with 3 or more years of experience in Intellectual Property transactional work, including conducting due diligence reviews of intellectual property, drafting correspondence and diligence memoranda, preparing of worldwide assignments and post-closing recordings, and preparation of intellectual property schedules for corporate and secured lending transactions.  Additional qualifications include good research skills, excellent communication skills, and strong analytical and organizational skills.  Experience with IP prosecution and a Bachelor’s degree preferred, though not required.  Availability to work overtime is required.
 

How to Apply

Thank you for your interest in Kirkland & Ellis LLP.  To complete an application and submit your resume, please click "Apply Now."

Equal Employment Opportunity

All employment decisions, including the recruiting, hiring, placement, training availability, promotion, compensation, evaluation, disciplinary actions, and termination of employment (if necessary) are made without regard to the employee’s race, color, creed, religion, sex, pregnancy or childbirth, personal appearance, family responsibilities, sexual orientation or preference, gender identity, political affiliation, source of income, place of residence, national or ethnic origin, ancestry, age, marital status, military veteran status, unfavorable discharge from military service, physical or mental disability, or on any other basis prohibited by applicable law.

Closing Statement

The www.kirkland.com job postings and recruiting mailbox are for candidates only. If you are a recruiter, search firm or employment agency, and do not have a signed contract with Kirkland & Ellis LLP ("K&E") and have not been asked specifically to submit candidates, you will not be compensated in any way for your referral of a candidate even if K&E hires the candidate. Direct contact with K&E employees in an attempt to present candidates is inappropriate and will be a factor in determining any future professional relationship with the Firm.

 
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