Intellectual property is an intangible property that refers to the creation of the human intellect. The law gives recognition to Intellectual Property or IP as exclusively belonging to the person who creates it. IP rights typically include patents, trade rights, copyright, industrial design rights, and trademarks. These rights help to promote IP protection and enforcement and deter access to counterfeit and pirated goods.
An IP paralegal helps lawyers, corporations, institutions, and government agencies with patents, trademarks, copyrights, and intellectual property litigation. They assist with a variety of cases in this field on various sides of intellectual property arguments. In addition, an intellectual property paralegal conducts research as assigned by attorneys, drafts applications, ensures completion, manages appeals, provides status reports, tracks progress, and communicates with clients regularly.
Hence, clients who face issues in the preparation, management, or dealing in patent applications, trademarks, IP litigation, and more can outsource it to an IP paralegal to perform the legal work. Here are some of the typical duties which an IP paralegal fulfills.
Trademark and Servicemark Applications
Filing a Trademark/Servicemark application with the USPTO (the United States Patent and Trademark Office) enables the clients to claim rights on the mark and prevent the misuse of the claimed mark. It helps to assert ownership of these marks, logos, and slogans and protect it from being stolen. IP paralegal assists with trademark filing to help you classify your trademarks as intellectual property protection from infringement. Be it physical filing or online trademark registration, and an IP paralegal will guide you through the entire process effectively to minimize the chances of rejection of the application. They constantly monitor the status of the application and file responsive forms if USTPO requires additional information.
A patent is a type of intellectual property that grants the exclusive right to a patented process, design, or invention. It permits the inventor to prevent any third party from making, selling, or using the invention for some time. The three different kinds of patents are utility patents, design patents, and plant patents. The invention should be both “novel” and “non-obvious” to qualify for a patent. An IP paralegal assists clients in preparing a patent application and identify if the invention is patentable. If USPTO requests for additional information or rejects an application, IP paralegal can file requests for reconsideration. In addition, they can carry out extensive patent searches to find prior art references and access technical, legal, or business information about the patent. Carrying out an effective investigation is essential to discover the invention’s potential so that it is novel and does not share similarities with any other invention that is already patented.
Copyright protection grants the owner various rights, including the right to reproduction, the right to issue copies or perform the work in public, distribute and display the result. Copyright is a facet of intellectual property. Filing for a copyright application may give access to the owner to a copyright certification which acts as evidence of ownership during a dispute. IP paralegal help client to file copyright applications, track the current status, and record copyright transfer or termination documents.
The process of handling disputes and bringing lawsuits is known as litigation. It is carried in court to enforce a particular right. For example, if a third party infringes on the trademark, patent, or copyright owner, they can register with the USTPO to stop the infringement and recover from the damages caused. IP paralegal enables attorneys during IP litigation and assists them in drafting pleadings. They carry out the research to identify the case law, prepare exhibits, and correspond with the proper personnel. Some of them also assist in trials.
IP research helps the stakeholders to gain insights before filing a patent, copyright, or trademark application. An IP paralegal researches databases for prior art to determine if the copyright, patent, or trademark is not issued for mark, invention, or work. They can perform the litigation search to determine the proper jurisdiction and locate statutory or case law before initiating the lawsuit. An IP paralegal deploys the best practices during litigation, searching the correct index for the desired information and improve the chance of success.
Some other duties which an IP paralegal fulfills besides assisting with domain-specific activities may pertain to maintenance, management, and review of client’s patent, trademark, or copyright. These are based on the clients’ requirements, and the IP paralegal customizes their service to provide the desired solution. They can correspond with clients and opposing counsel, review and draft licensing agreements, and more.
Intellectual property protection helps to foster innovation and enables the inventor to reap the full benefits of their invention without running any risk of infringement. Well-protected intellectual assets give the stakeholder a competitive advantage over others. An IP paralegal enables the inventor to perform necessary operations in claiming rights to the invention and file applications in the regulatory offices properly. Lawyers, corporations, and institutions can hire them to achieve the desired intellectual property legal work efficiently.