About the job
Ellis Law Group, which has been recognized by Chambers as among the best small and mid-sized NY firms for corporate law and startups & emerging companies, has a time-sensitive need for an experienced IP attorney for a part-time/contract position.
The successful candidate must be able to independently advise clients on trademark and copyright protection as well as draft and negotiate license agreements. Experience with technology-related agreements and privacy matters would be a plus.
This position is an excellent opportunity to work as part of a boutique firm boasting a talented, congenial team of attorneys. Although the firm has offices in Midtown Manhattan, the firm possesses a nationwide practice. The IP attorney can work in a fully remote (US-based) manner, allowing for additional work schedule flexibility, and candidates do not need to reside or be admitted in New York.
This position is part-time, on a project-by-project basis, and would be a good fit for someone who a) wants a flexible schedule or b) is looking to supplement their independent practice or other projects. The successful candidate would be listed on the firm's website.
Interested candidates with these qualifications should submit a cover letter and resume together with compensation requirements. No phone calls or direct emails, please.
Key Requirements:
• Must have a JD degree and be admitted to a state bar in at least one U.S. state
• Must have in-depth knowledge of and experience in trademark and copyright practice, including but not limited to:
• U.S. trademark counseling, clearance, and prosecution experience, including review and analysis of clearance searches, and preparing substantive responses to USPTO office actions
• Preparing and filing applications to register trademarks with the USPTO, including international registrations
• Experience and familiarity with copyright law, including copyright counseling and registration
• Conducting and analyzing preliminary and comprehensive trademark searches
• Conducting IP due diligence for complex business agreements and IP audits
• Handling IP infringement issues, including drafting and responding to cease-and-desist letters
• Assisting in the management of trademark portfolios, including multi-jurisdictional filing programs and US and foreign contentious matters
• Maintaining constant communication with clients and foreign counsel concerning clearance, filing instructions, office actions, potential obstacles and similar prosecution matters
• Must have experience drafting and negotiating license agreements. Experience with software, SaaS and other technology-enabled or related agreements would be a plus.
• Should have the ability to apply licensing knowledge (including copyrights, trademarks, and patents) to various types of commercial arrangements, including but not limited to distribution agreements, collaboration agreements and financing agreements
• Knowledge of, and experience with, privacy law is a plus but is not a requirement
• Excellent written, verbal and interpersonal communications skills
• Ability to multitask, handle a busy schedule, communicate and work well in teams
• Must be authorized to work lawfully in the United States
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