IP Docketing & Legal Assistant – Intellectual Property
- Contact: Hiring@rosenbaumip.com
The IP Docketing & Legal Assistant provides essential and specialized client and attorney support relating to the docketing and deadline maintenance of all phases of domestic and foreign patent, trademark, & copyright prosecutions, from pre-filing to final maintenance of issued patent, trademark, & copyright. This position will teach candidates docketing software and best practices for IP docketing. You will also be responsible for providing administrative support to attorneys, paralegals and other administrative personnel as assigned. You will be expected to perform all job duties with a commitment to providing outstanding value-added service to clients, producing quality work products, and maintaining an atmosphere of teamwork and continuous and never-ending improvement. Above all, as with all employees, you will be expected to fulfill the needs of the office in a manner which is consistent with the Firm’s Core Values.
The outcomes you will be responsible for achieving include:
- Docket new patent, trademark, & copyright case filings, incoming office actions, and correspondence (PTO, PCT, and Foreign Associate), as needed;
- Run dockets reports for patent, trademark, & copyright cases on a daily basis and other specified intervals as required;
- Clear the docket on a daily basis;
- Advise attorneys of issues relevant to clearing the docket, and re-docket actions as needed;
- Assist in quality assurance review for patent, trademark, & copyright filings by noting and referring any errors or omissions observed during the normal course of docketing duties;
- Prepare docket status reports for clients and attorneys as needed;
- Prepare maintenance fee reports to attorneys and clients as needed;
- Maintain and update foreign and U.S. patent, trademark, & copyright prosecutions in our docket systems to track deadlines associated with obtaining and maintaining foreign and domestic patent, trademark, & copyright;
- Assist in checking and updating the status of patent, trademark, & copyright cases with the United States Patent and Trademark Office and foreign patent office’s when appropriate;
- Perform electronic interactions with the U.S. Patent and Trademark Office as well as foreign and international intellectual property entities (e.g. searches, status checks, electronic filing of patent, trademark, & copyright applications and responses);
- Prepare for and attend to payment of foreign patent, trademark, & copyright annuities and US patent, trademark, & copyright maintenance fees;
- Other duties as assigned.
- Timely, clear and value-added reporting of U.S. and foreign patent, trademark, & copyright prosecution information to clients.
- Timely and responsive telephone and email communication with clients.
- Timely conveying of messages and information to attorneys.
- Efficient and effective preparation of document drafts for filing with U.S. Patent and Trademark Office or correspondence instructions to foreign counsels.
- Efficient and effective accessing of patent and trademark office websites and patent and trademark informational on-line sites and timely conveying of information to attorneys or paralegals.
- Maintaining a professional and affable demeanor in communicating with clients and with others at the Firm.
- Eagerly seeks out areas to assist the Firm and learns new tasks.
- Learning and developing expertise in using ProLaw, the Firm’s practice management, document management and database system.
- Learning and maintaining current knowledge of U.S. and foreign patent, trademark, & copyright prosecution activities and timelines.
- Monitoring docket entries and other deadlines and coordinate attorney calendars.
- Processing Incoming and Outgoing Client and USPTO Correspondence.
- Typing and formatting new patent, trademark, & copyright applications preparing and formatting amendments.
- Reporting on portfolio status and action items, such as filings with U.S. and foreign patent, trademark, & copyright offices, maintenance fee/renewals/annuity dates and payments, etc.
- Generating and editing general documents for USPTO filings, client correspondence and internal forms.
- Typing and editing legal and other documents (including correspondence, memoranda, bills, timesheets and project work) from digital transcription, handwritten or typed materials.
- Performing support functions associated with firm administrative tasks, including processing new client/matter requests, client bills, and time reports.
- Coordinating travel arrangements, securing air and ground transportation and hotel accommodations and handle expense reporting.
- Copying, distributing and sending (electronically and/or via mail, courier or express service), filing and otherwise handling completed work.
- Proofreading and redlining work for accuracy of copy, format, grammar, punctuation and syntax.
- Answering, screening and transferring telephone calls, conference calls and messages to/from attorneys, clients and staff.
- Processing incoming and outgoing mail and email.
- Setting up and maintaining electronic files and paper files, where applicable.
- Maintaining attorney calendars and Firm public calendars, to coordinate conferences, meetings and appointments.
- Coordinating work as needed with office, firm and third-party service vendors.
- Ability to type at least 70 words per minute with accuracy.
- Having thorough knowledge and ability to seamlessly and efficiently use MS Office applications including Word, Outlook, Excel and PowerPoint.
- Preparing time records, expense reports and client bills.
- Having the ability to work independently and as a member of a team, take initiative, set priorities and see projects through completion
- Having a commitment to personal and professional growth
Ideal candidate will have 1-5 years in patent & trademark prosecution in a corporate or law firm intellectual property law department, together with knowledge of timelines in the United States, under the PCT and in major foreign jurisdictions. Familiarity in US and foreign trademark prosecution is preferred.
The ideal candidate will be highly organized, proactive and motivated with strong and effective organizational, communication and interpersonal skills. Be an excellent problem-solver and team player with a “client first” attitude with a desire and willingness to learn, adopt and expand the Firm’s culture.
Must work effectively with other motivated professionals in a high-energy environment. Knowledge of Prolaw or Elite docketing and practice management software a plus.
Salary depends upon experience and performance. Full benefits package and reasonable relocation assistance. Salary History required.