Intellectual Property Paralegal

About the role

Gibson Dunn is a leading global law firm that advises clients on significant transactions and disputes. The firm's work is marked by a distinct combination of precision and vision. Complex and high-stakes matters are addressed through the deployment of tailored legal strategies crafted by exceptional teams. The Intellectual Property Paralegal position is based in New York, Washington, D.C., or Orange County. This role supports attorneys in the transactional department and reports to the Transactional Paralegal Supervisor and Associate Director of Paralegal Services. The position involves responsibility for a full range of intellectual property matters. Paralegals will prepare and file U.S. trademark applications, responses to office actions, and requests for extensions of time. Statements of use, declarations of use, and declarations of incontestability will be prepared, along with renewals and related filings for U.S. trademark prosecution.

Key facts

What you'll do

• Execute docketing and administrative tasks for U.S. and international trademark portfolios, ensuring strict adherence to filing deadlines and procedural requirements.
• Prepare and file U.S. trademark applications, responses to office actions, and requests for extensions of time with meticulous accuracy and attention to detail.
• Draft and file statements of use, declarations of use, and declarations of incontestability, coordinating closely with attorneys to ensure factual and legal consistency.
• Conduct comprehensive trademark availability searches and synthesize complex results into clear, actionable summaries for client decision-making.
• Research and prepare cost estimates for filing domestic and foreign trademark applications and renewals, providing transparent budgeting information to stakeholders.
• Draft and file Designate International Registrations (IR) and Madrid protocol applications, managing irregularity responses, subsequent designations, and WIPO renewals without delay.
• Communicate directly with foreign associates to file national trademark applications, respond to provisional refusals, handle oppositions, cancellations, and other prosecution or enforcement matters.
• Prepare and file state trademark applications and renewals while managing record ownership transfers, security agreements, and related documentation with the USPTO and WIPO.
• Review, monitor, and maintain electronic dockets in CPI, de-docketing actions as necessary and tracking critical deadlines on a weekly basis to mitigate risk.
• Conduct intellectual property due diligence covering trademarks, patents, copyrights, and domain names in support of mergers, acquisitions, and financing transactions.
• Provide assistance with the preparation and filing of Trademark Trial and Appeal Board (TTAB) proceedings, including pleadings and procedural filings.
• Draft trademark assignments, security agreements, and releases of security agreements, coordinating record ownership transfers and liens with USPTO and WIPO systems.
• Draft and file copyright applications while managing record ownership transfer and security agreements with precision and compliance.
• Review notices from foreign associates, the USPTO, WIPO, TTAB, and the Copyright Office, summarizing key developments and reporting them to the legal team for timely action.
• Oversee the legalization of documents and analyze watch notices, flagging potential conflicts or risks to the client's intellectual property positions.

Requirements

• Hold a Bachelor's degree or an equivalent combination of education and substantive paralegal experience that demonstrates foundational knowledge and professional competence.
• Meet state requirements governing the performance of paralegal duties, including any necessary certifications or qualifications that apply to the jurisdiction of practice.
• Possess five or more years of experience in an Am Law 100 environment, proving consistent exposure to high-volume, complex, and confidential matters.
• Exhibit superior analytical and reasoning abilities to interpret legal concepts, assess factual patterns, and anticipate procedural outcomes.
• Demonstrate strong written and verbal communication skills to interact effectively with attorneys, clients, and foreign associates across multiple jurisdictions.
• Maintain excellent organizational skills and attention to detail to manage multiple matters, competing deadlines, and intricate docketing requirements.
• Show a proactive approach to handling multiple projects and client matters simultaneously without sacrificing quality or accuracy.
• Operate with flexibility to balance priorities and tight deadlines, adapting quickly to shifting workloads and client demands.
• Willingness to work paid overtime as needed to meet critical deadlines and support the firm's service obligations.

Nice to have

• Preferred proficiency with CPI (or similar docket platform), Westlaw, CompuMark/Saegis, and Orbit Intelligence to streamline research and docketing workflows.

Practical notes

• Willingness to work paid overtime as needed.
• Five or more years of experience in an Am Law 100 environment.
• Candidates must meet state requirements governing the performance of paralegal duties.
• The position is based in New York, Orange County, or Washington, D.C.
• No official application page is referenced in the source materials.
• No specific working hours are outlined in the source materials.