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Law Offices of Barry Sooalo ------------------------- Attorney at Law

Intellectual Property
Paralegal Duties for Individual Practiced Areas
Alternative Dispute Resolution (ADR)
Asbestos Litigation
Contract Administration
Domestic Relations/Family Law
Employee Benefits
Intellectual Property
Personal Injury/Medical Malpractice/Product Liability
Probate and Estate Administration
Public Benefits
Real Property
Securities/Municipal Bonds
Workers' Compensation

Intellectual Property

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.


* 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.


* 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.


* 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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Providing legal services in civil and criminal matters in Honolulu and throughout the Pacific.