The IP Docketing Paralegal is responsible for handling docketing and document management functions related to all IP prosecution matters. The IP Docketing Paralegal handles the docketing of inbound, outbound and internal communications and proactively monitors and ensures that all final deadlines are timely met. The IP Docketing Paralegal is expected to have a comprehensive understanding of the patent and trademark prosecution process worldwide and be competent in the docketing of all related actions. The IP Docketing Paralegal acts as a knowledge and support resource to junior level docketing paralegals. The IP Docketing Paralegal works closely with his/her supervisor, other department managers and supervisors and team members to provide consistent high quality service to both internal and external clients. The IP Docketing Paralegal provides back-up to team members when necessary. Availability for overtime is required.
1. Possesses a comprehensive understanding of PTO rules and procedures for obtaining and maintaining patent and trademark protection worldwide. Possesses a comprehensive understanding of internal policies and procedures related to docketing. Applies knowledge in order to effectively review and docket inbound, outbound and internal communications and related docketing requests. Creates new records as needed and assists in the docketing of transferred cases.
2. Acts as team lead in ensuring the completion of tasks by the appropriate personnel in a timely manner. Assigns and reassigns work as needed, reviews work performed by team members, maintains and monitors department task log to ensure completion of tasks within targeted deadlines. Acts as back-up to more junior staff members, as needed, in the docketing and document management functions of the department. Attends weekly docket meetings with filing paralegals and acts as a key resource to practice group personnel on docketing procedures and needs. Coordinates transfer of cases.
3. Acts as liason with docketing vendor to ensure the smooth transition and accurate and timely completion of work. Meets regularly with vendor.
4. Ensures that loss of rights deadlines are cleared in accordance with firm policies.
5. Assists with ensuring the integrity of internal and external contacts maintained in the IP prosecution database and handles global updates or reassignments of contacts as needed.
6. Reviews routine audit reports and makes corrections or updates to IP prosecution database as needed.
7. Prepares reports and assists other department staff in the preparation of reports; customizes standard reports as needed.
8. Assists with client and firm projects as needed.
9. Ensures that all tasks carried out are compliant with the firm's policies, processes and procedures.
10. Keeps current with patent and trademark practice rules and regulations worldwide.
11. Performs other duties including team coverage, as required.
12. Assists in ensuring the smooth operations of docketing support functions during his/her supervisor's absence.
13. Assists in supervision of entry and mid level paralegals and assistants.
14. Serves as a mentor to and provides leadership and training for entry and mid level paralegals and assistants.
15. Performs 1300-1600 hours of billable work annually
• Excellent communication, oral, written and interpersonal skills.
• Able to maintain confidentiality in all client and firm matters.
• Able to interact effectively with all levels of personnel.
• Able to be flexible in order to respond quickly and positively to shifting demands and opportunities; able to work under tight deadlines and handle multiple, detailed tasks.
• Excellent attention to detail and able to follow up and follow through.
• Able to work in a collaborative teamwork environment and able to share information with the appropriate parties.
• Able to plan, organize and carry out multiple related activities.
• Strong computer skills, including Microsoft Word, Excel and Outlook and a demonstrable ability to learn any department specific software.
• Able to maintain a professional demeanor in all situations.
• Able to work effectively in a culturally and educationally diverse environment.
• Able to work effectively in a multi-office environment.
• Able to adhere to the firm's policies, procedures and core values.
EDUCATION, EXPERIENCE AND SKILLS REQUIRED:
Bachelor’s degree and minimum of five years IP prosecution docketing experience required. Or, minimum of seven years IP prosecution docketing experience required. Docketing experience in all areas of IP prosecution preferred. Experience with IP technologies is essential. Excellent communication skills, able to work collaboratively, think creatively and take initiative.
Incumbent is expected to work the hours necessary to fulfill the responsibilities of the position. The above job description is intended to describe the general content of and requirements for the performance of this job. It is not to be construed as an exhaustive statement of essential functions, responsibilities or requirements. Firm management reserves the right to amend and change responsibilities to meet business and organizational needs.
How To Apply
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