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Paralegal - Technology & IP Transactional

Job ID: 5497

Updated: Feb 22, 2021

Location: Chicago, IL, 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

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.

Qualifications & Requirements

Education, Work Experience, Skills

This position requires 2 or more years of paralegal experience in intellectual property transactional or prosecution work, preferably 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.  A successful candidate must be able to work independently as well as with a team, have an acute attention to detail, and is able to multi-task and prioritize while working in a high pressure, deadline-driven environment. Bachelor’s degree preferred, but not required.  Overtime is required.

Technologies/Software

Strong technical skills are required, particularly Microsoft Word, Excel, Outlook, SAEGIS and CPi Docketing.  Knowledge of Carpe Diem, Westlaw, SharePoint, PowerPoint, and LegalKey is a plus.

Certificates, Licensures, Registrations

Paralegal Certificate is preferred.

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.