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General Duties
* Research and compile information pertaining to
o national and international intellectual property rights;
o procedural matters and case law, including Lanham Act and Restatement of Torts; and
o unfair competition and copyright infringement actions.
* Prepare status summary reports for attorneys and clients.
* Coordinate international filings with foreign law offices and/or other foreign entities.
* Maintain docket system of due dates for actions, including responses, renewals, oppositions, Section 8 and 15 affidavits,
use affidavits, Patent Cooperation Treaty requirements, and payments of patent annuities in foreign countries.
* Assist in intellectual property-related litigation.
* Assist in oppositions, interferences and cancellations; draft necessary pleadings for use in these inter partes
proceedings.
Trademarks
* Perform on-line searches of Patent and Trademark Office (PTO) records, industry databases and general legal research.
* Conduct searches for information regarding trademarks.
* File applications, statements of use, renewal applications, affidavits of use, and assignments.
* Draft responses to PTO actions and oppositions.
* Police client's trademarks to guard against potential infringements.
* Review all products, advertising, and packaging to ensure proper use of client's trademarks.
* Maintain foreign trademarks, which includes corresponding directly with foreign associates and instructing them
to search trademarks and to file applications, renewals, affidavits of use and oppositions.
* Obtain legalizations and certifications for filing foreign trademarks.
Patents
* Some duties as outlined for trademarks; however, duties also include devising a filing strategy for each invention,
which saves the client money and provides the best protection of the patent throughout the world.
Copyright
* Draft and file renewal applications and infringement letters.
* Draft licensing agreements and review proposed licensing agreements.
* Review client's materials and supervise placements of copyright notices on products and materials to ensure that
the client does not unintentionally copy someone else's presentation.
* Research and compile information about notice requirements, longevity of enforcement, and renewal options.
Note- Some of the information contained in the Litigation section of this publication also includes work performed in
the Intellectual Property specialty area.
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