IP Specialist

Supports the IPTS legal practice area with the Technology/Life Science Business Unit by docketing, filing and handling various IP prosecution matters by utilizing the IP knowledge gained through years of experience. This position includes reviewing processes and procedures and making ongoing recommendations regarding the streamlining of systems, training others and interviewing prospective employees. This position works closely with attorneys, paralegals, and secretaries to deliver cost effective, efficient work product for our clients. This position also includes working on specialized projects brought forth by the IP Manager and the IP Group.

ESSENTIAL DUTIES AND RESPONSIBILITIES:

An IP Specialist can be called upon to perform some, but not necessarily all, tasks within each function listed below.

  1. Reviews all incoming mail related to patent or trademark matters. Analyzes and calculates applicable deadlines and response dates. Enters deadlines and summary of same in database.

  2. Prepares and files PCT applications, direct Foreign Filing applications and nationalizations

  3. Assists IP Manager with intake of patent and trademark portfolios for new clients, including CPI data transfers, coordination of data entry, file intake, and monitoring of POAs and FA notifications.

  4. Assists IP Manager with outtake of patent and trademark portfolios for clients transferring to other counsel, including CPI data transfers or reports, and coordination with Records.

  5. Generates monthly, weekly and special docket or client reports for attorneys, included query reports.

  6. Reviews daily/weekly docket for time sensitive response (final deadlines) and generates daily/weekly alerts.

  7. Monitors, maintains, and updates database as needed regarding trademark and patent mattes.

  8. Reviews outgoing filings for accuracy and completeness.

  9. Ensures that docketing databases function at acceptable performance levels. Involved with trouble-shooting, data conversions, and all aspects of system functions. Coordinates with IP Manager to ensure database functions meet the needs of the IPTS group. Applies database changes as necessary to conform to rule changes.

  10. Prepares cost estimates for international patent and trademark filings using licensed software.

  11. Coordinates payment of patent annuities with annuity service.

  12. Maintains or oversees maintenance of EPO Deposit Account and additional accounts as directed by the IP Manager

  13. Assists with Docket Checks of patent and trademark files as determined by IPTS Best Practices group or local office partners.

  14. Utilizes previous experience to review docketing and filing processes and procedures and recommend adjustments to present practices that will result in both greater efficiency and improved client service. Review will include an evaluation of systems as well as processes.

  15. Develop a plan to implement improvements and monitor processes so that all systems are streamlined and staff is aware of new processes.

  16. Provides supervision to IP Administrators, IP Coordinators, IP Secretaries and/or IP File Clerks as requested by IP Manager.

  17. Work with the IP Manager to determine and plan necessary training for IP Administrative staff.

  18. Participates in IPTS groups or task forces, i.e. E-files initiative, IPTS Best Practices, etc. as directed by the IP Manager.

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RequirementsKNOWLEDGE, SKILLS AND COMPETENCIES:

  • Excellent interpersonal, organizational, and communication skills, and ability to communicate clearly, both written and verbal.
  • Strong attention-to-detail and ability to work independently and to manage multiple tasks simultaneously.
  • Sound judgment and ability to respect, protect, and maintain highly confidential and sensitive information.
  • Must work well in team environment and maintain a positive team atmosphere.
  • Ability to use standard office software (MS Excel, Word, Internet Search Engines, etc.) required.
  • Experience with docketing software (CPI).
  • Proven ability to consistently provide exemplary client service, both internally (to attorneys and IP Manager) and externally (to clients).

EDUCATIONAL QUALIFICATIONS/JOB EXPERIENCE REQUIREMENTS:

  • Bachelor's Degree or equivalent.
  • A minimum of 7-10 years of experience in an IP Administrator or equivalent role, with knowledge and expertise in all facets of IP Docketing (Docketing Foreign & U.S. Mail, Foreign Filing Experience, Annuities, File Transfers etc.)

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