Docketing Specialist-IP

Any US office

Summary

A national law firm is hiring and has an opening for an experienced IP Docketing Specialist.

Responsibilities

• Knowledge of Intellectual Property, including USPTO, PCT and international rules and procedures for patent and trademark prosecution, as well as keep abreast of department best practices and guidelines.
• Ability to analyze and interpret various IP rules, including Code of Federal Regulations (CFR) and Manual Patent Examining Procedures (MPEP).
• Working knowledge and experience with IP docketing procedures and software (CPi preference), to docket patent and trademark deadlines for global portfolios.
• Ability to analyze patent and trademark documents and related communications to identify, generate and update deadlines for all phases of domestic and international prosecution. Example IP documents include, but are not limited to: Applications, Filing Receipts, Application Data Sheets, Office Actions, Section 8/15 Statements, Notice of Allowance, Issue Notifications, Notice of Missing Parts and Formality Documents generated by US, PCT and international patent offices, or communicated by the client or international counsel.
• Responsible for IP docketing for assigned client portfolios, which includes accurate deadline management in docketing software, and may also include distribution of official patent and trademark communications internally or externally.
• Ability to navigate US and international patent and trademark online databases to obtain and/or verify application details and retrieve documents as needed.
• Ability to generate and edit reports from IP docketing software, as well as skill to assist with requested client portfolio reports identifying status of IP matters and deadlines.
• Assist with patent and trademark transfers (inbound and outbound), including report generation, verifying portfolio details, and may include assisting with patent office formalities (such as Change of Correspondence and/or POA).
• Effectively set priorities, meet deadlines and manage multiple projects.
• Ability to pay attention to the minute details of a project or task (i.e., patent and trademark particulars, such as inventor names, dates, titles, ownership, etc.)
• Critical thinker who works efficiently, using available technology and strives to make tasks easier and more efficient.

Requirements

• Working knowledge of USPTO, PCT, and international rules and procedures for patent and trademark prosecution
• Proficient in understanding and management of IP docket and deadlines, including statutory and filing deadlines
• Exceptional attention to detail
• Strong organizational skills and ability to prioritize multiple projects
• Professional verbal and written communication skills
• Strong interpersonal skills
• Proficient in CPi and Microsoft programs (Word, Excel, Outlook)
• 5+ years IP Docketing experience, with CPi software preferred, and within a law firm environment.
• Prior experience with managing high-volume client portfolios.
• High School diploma or equivalent. College degree preferred.

Compensation

$60,000.00-$85,000.00, plus overtime and bonus  

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