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Technology and IP Transactions Paralegal

Job ID: 5181

Updated: Oct 8, 2019

Location: Palo Alto, CA, United States

Category: Paralegal

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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

POSITION OVERVIEW

Our Bay Area offices are 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:

ESSENTIAL FUNCTIONS

  • Discuss and develop IP due diligence search strategies with attorneys.
  • Order searches on IP holdings (registered trademarks, patents, 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 (“USCO”) website databases, foreign IP office website databases and the SAEGIS trademark database.
  • 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
  • Conduct research on a company background 
  • Analyze and compare IP disclosure against global search results including ownership and chain of title information
  • Draft memoranda summarizing IP search results and discuss issues relating to a company’s IP holdings and IP-related litigation.
  • Draft and review schedules of IP holdings
  • Assist attorneys in reviewing data room materials for documentation regarding IP holdings.
  • Order copies of recorded assignments, security interests and title documents recorded at government offices
  • Draft and review IP assignments, IP security agreements and releases
  • Liaise with attorneys and participate in conference calls regarding information about IP holdings.
  • Prepare recordation cover sheets and electronic filings for documents to be recorded at USPTO or USCO.
  • Correspond with foreign associates and communicate with client, opposing counsel or in-house contact to obtain necessary documents and information for recording assignments internationally.


    EXPERIENCE OR BACKGROUND IN THE FOLLOWING HELPFUL BUT NOT REQUIRED

  • Conduct preliminary trademark clearance searches
  • Draft trademark/service mark applications, affidavits of use, maintenance/renewal filings and assignment agreements
  • Draft responses to trademark examining attorney’s official action for attorney review
  • Prepare cost estimates for domestic and foreign trademark filings
  • Communicate with foreign trademark counsel and agents regarding registration and maintenance matters

Qualifications & Requirements

Education, Work Experience, Skills

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 great research skills, excellent communication skills, and strong analytical and organizational skills.  Experience with IP prosecution and a Bachelor’s degree preferred, though not required.  Overtime as required.
 

Technologies/Software

  • Microsoft Outlook, Word, PowerPoint, Excel, SAEGIS

Certificates, Licensures, Registrations

  • Paralegal certification is preferred

Tools and Equipment

  • N/A


WORK ENVIRONMENT

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

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.