What is an Intellectual Property (“IP”) Paralegal?

Intellectual property is intangible property that a person creates and that the law recognizes as belonging exclusively to them. Intellectual property includes musical, literary, and artistic works, as well as inventions, words, phrases, and designs. Intellectual property rights may include patents, trade secrets, copyrights, and/or trademarks. An intellectual Property, or IP, paralegal works with clients to help them patent and/or trademark their works and to enforce their trademarks and/or copyrights if another party infringes upon them.

Intellectual Property Paralegal

What is an Intellectual Property (“IP”) Paralegal?

What an IP Paralegal Does

IP Paralegals work for law offices, corporations, institutions, and government agencies preparing trademark, patent, and copyright applications, assisting with intellectual property litigation, and conducting related intellectual property research.

Trademark and Service mark Applications

A logo, graphic, phrase or specific ‘mark’ used to identify a particular business, is called a trademark, when it is used to identify a business that sells goods, and a service mark, when it is used to identify a business that sells services. The term trademark, however, is frequently used to refer to both trademarks and service marks.  Not all trademarks must be registered, and a business is free to use an unregistered trademark, however, if not registered, the mark is not protected from the use of others. Businesses that wish to claim ownership of their trademark, and prevent other similar businesses from using it, must file a trademark or service mark application with the U.S. Patent and Trademark Office (“USPTO”). IP paralegals may complete online trademark applications for clients, assist with identifying and describing the goods and/or services clients sell, and help client’s choose the proper basis for a trademark filing. They may also monitor trademark applications and file responsive forms, when the USPTO requests additional information.

Patent Applications

A patent is an intellectual property right granted to the owner of an invention, by the USPTO. A patent prevents others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States. IP paralegals may prepare patent applications and file replies or requests for reconsideration, when the USPTO requests additional information or denies an application. They may also conduct patent searches in order to ensure that clients do not attempt to patent an invention, which is already patented, or is substantially similar to an invention that has already been patented.

Copyright Applications

The author or creator of a musical, artistic, or literary work may wish to register his or her copyright of the work, in order to create a public record of the copyright and help maintain exclusive legal rights to perform, distribute, display, and/or reproduce the work. Registration for a U.S. copyright may be completed through the U.S. Copyright Office, by using the online filing system or printing and filling out paper forms. Paralegals in intellectual property law offices may complete copyright applications, track the status of applications, and record copyright transfer or termination documents on behalf of clients.

Intellectual Property Litigation

When someone infringes on the trademark, patent, or copyright of another, registration with the USPTO or the U.S. Copyright Office gives the original owner the right to use the Courts to stop the infringement, and sometimes to recover damages caused by the infringement. IP paralegals support attorneys during intellectual property litigation by drafting pleadings, performing research to locate appropriate case law, preparing exhibits, conducting discovery, and corresponding with expert and other witnesses. Some IP paralegals may also assist at trial, watching the jury, keeping notes on testimony, and helping with exhibits.

IP Research

Before completing a copyright, patent, or trademark application, an IP paralegal may search the USPTO or U.S. Copyright Office’s databases to ensure that a copyright, patent, or trademark has not already been issued for the mark, invention, or work. IP paralegals also conduct litigation research in order to locate statutory or case law to support a client’s position or to refute an opposing party’s position.

Other Duties of an IP Paralegal

Intellectual Property Paralegals may also be responsible for client’s patent, trademark, or copyright maintenance, keeping the attorneys calendar(s), corresponding with clients and opposing counsel, client intake, reviewing and drafting licensing agreements, and performing any other task that other paralegals might perform.

How to Become an IP Paralegal

In order to become an IP paralegal, one must develop the necessary skills and experience required of a professional working in the intellectual property field. Because intellectual property involves scientific, mechanical, and technological ideas, inventions, and process, a basic understanding of science, mechanics, and technology can be helpful when assisting a client with a patent or during litigation. However, even without much knowledge of scientific processes or mechanical workings, one can be become an IP paralegal by concentrating on developing specific skills and doing some very specific things.

1. If you do not already have a paralegal degree, get one. For more information about paralegal degrees and certificates, see 7 Steps to Choosing the Paralegal School Right for You.

2.  Develop management skills. IP paralegals are frequently in charge of a ‘team’ of professionals, working together to create and register a unique mark or product, and need to have good people and project management skills. Consider taking a management class or asking your current boss for more management responsibilities. The Massachusetts Institute of Technology (“MIT”), the University of Michigan, and Open University all offer free people and project management courses. Visit the Education Portal for a listing of free management courses you can take online.

3. Learn something about marketing. Many intellectual property paralegals work directly with marketing firms and marketing departments as they are creating their brand, designing service and trademarks and securing patents. When working with marketing professionals, it may help to have some knowledge of how marketing works and what those you are working with are really trying to accomplish. You may want to consider taking a marketing class. Several free marketing classes are offered online through MIT, Ohio State University, and Stanford. Just visit the Education Portal for a listing of 10 free places to find free online marketing courses.

4. Take an intellectual property law class or earn a certificate. Take a class at a local college or university, or earn a certificate online at IPlegalEd or the Washington Online Learning Institute. IPlegalEd offers online certificate courses in both patents and trademarks. Each course teaches you how to file an application, understand the application process, and how to handle many of the common issues that arise with patent and trademark applications and use. The Washington Online Learning Institute also offers both an introductory and an advanced IP law class. Students who pass both classes earn a Certificate in Advanced Intellectual Property.

5. Network. The best way to get a job in any particular area of the law is to network with other professionals who already work in it. Join some IP groups on LinkedIn, check out the Association of Intellectual Property Paralegals, or locate a state or local association of IP paralegals to join. You may also want to consider doing volunteer work or joining your local or state Bar Association for more networking opportunities.

6. Use technology. Hashtags and the advanced algorithms used by today’s search engines have helped to make the internet a wealth of easy to find job openings. Run an internet search for IP paralegal jobs or use hashtags to search Twitter for job openings in the intellectual property area of law.

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About Shelley Riseden

Shelley M. Riseden is a freelance paralegal providing research, document preparation, and writing services to both attorneys and non-attorneys. She is an expert at conducting legal research and has a natural ability to grasp complex legal issues.Phone: 765.667.5139, E-mail: smriseden@earthlink.net or shelley@virtuallylegal.net, Skype: shelley.riseden, Yahoo: Virtually_Legal

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