IP Docket Specialist

Barnes & Thornburg LLP; Indianapolis (IN); On-site; USD 55,000 - 75,000; Full time

Job summary

Barnes & Thornburg LLP seeks an IP Docket Specialist with a strong docketing background for foreign and domestic patent prosecution matters.

Under supervision, this role handles incoming mail, adds due dates to the docket system, and compiles reports. Candidates should have 5+ years in IP docketing and CPi experience, with excellent attention to detail and ability to work in a fast-paced setting.

Qualifications

• Minimum five years’ IP docketing experience.
• Advanced understanding of the patent prosecution process and associated correspondence and deadlines.
• Excellent attention to detail with strong analytical and critical thinking skills.
• Ability to work independently and as part of a team in a fast-paced environment.
• Proficient computer and database skills, including Word, Excel, iManage and CPI.

Responsibilities

• Monitor docketing inbox and notices from foreign agents and USPTO.
• Maintain CPi database and update client and inventor information.
• Download daily mail from PAIR.
• Compile reports for attorneys and assistants as needed.
• Follow up on loss of rights dates with attorneys and staff.
• Clear docketed dates as tasks are completed.

Skills

IP docketing

CPi software

Patent prosecution

Deadline management

Attention to detail

Education

High school diploma

Bachelor’s degree preferred

Tools

CPi

iManage

Microsoft Word

Microsoft Excel

Job description

Summary

A successful candidate for this position should have a strong background in docketing both foreign and domestic patent prosecution matters.

Summary

A successful candidate for this position should have a strong background in docketing both foreign and domestic patent prosecution matters. Under direct supervision, and according to established policies and procedures, the IP Docket Specialist reviews all incoming mail from USPTO, foreign associates and clients and adds relevant due dates to docket system, compiles reports as requested and all related docketing functions. A qualified candidate should have a minimum of five years’ experience docketing intellectual property matters, knowledge of CPi software, patent prosecution terminology, and the deadlines associated with US and foreign intellectual property matters.

Key Responsibilities

• Monitoring docketing inbox and docketing patent prosecution notices and correspondence received from foreign agents or the United States Patent and Trademark Office.
• Maintaining CPi database for the IP Department’s patent prosecution files, including updates of client and inventor information, foreign associates and attorneys.
• Downloading daily mail from PAIR.
• Compiling reports for attorneys and their assistants, as needed.
• Following up with attorneys, paralegals and assistants with respect to any loss of rights dates.
• Promptly clearing docketed dates as tasks are completed.
• Adding new matters to the docket system as they are opened.
• Reviewing and docketing newly filed applications.
• Maintaining the data integrity of the CPi database.
• Assists with training and second-eye review of IP Docket Clerks’ work product.
• Performs other related duties as required.

The employee must be able to perform all essential job duties and responsibilities of this position satisfactorily and as outlined, with or without reasonable accommodations.

Reasonable accommodation requests may be accommodated, absent undue firm hardship.

Qualifications

• High School Diploma required, bachelor’s degree preferred.
• Minimum five years’ IP Docketing experience.
• Advanced understanding of the patent prosecution process and associated correspondence and deadlines.
• Exceptional attention to detail with good analytical and critical thinking skills. Must be able to decipher important information for entry into docket system with accuracy.
• Ability to work independently and as part of a team in a fast-paced, high-volume environment.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Proficient computer and database skills, including Word, Excel, iManage and Computer Packages, Inc. (CPI).
• Excellent interpersonal and communication skills are necessary to communicate with a diverse group of attorneys, staff, foreign associates and representatives from the U.S. Patent and Trademark Office in person, by email and telephone.
• Ability to maintain client confidentiality.
• Work occasionally requires a high level of mental and visual effort when performing a high volume of tasks and performing other essential duties under deadline.

This job description is intended to describe the general requirements of this position. As such, it is not designed to cover or contain a comprehensive listing of job duties or responsibilities required in this job. Subject to firm needs, duties and responsibilities of this position may change at any time, on a temporary or permanent basis, and with or without notice.

Working Conditions

• Normal office environment with little exposure to excessive noise, dust, temperature and the like.

Functions, Responsibilities Or Requirements.

Equal Employment and Opportunity Statement:

Barnes & Thornburg is committed to equal employment opportunity in both principle and as a matter of policy. We will recruit, hire, train, promote, compensate and provide benefits to all applicants and employees without regard to ancestry, sex, race, color, ethnicity, national origin, gender, age, religion, religious creed, mental and/or physical disability, medical condition, military and/or veteran’s status, genetic information, marital status, sexual orientation, gender identity and/or expression, or any other basis protected by applicable federal, state and local laws. This policy applies to all recruiting, hiring, promotions, upgrades, layoffs, compensation, benefits, terminations and all other privileges, terms and conditions of employment. The firm complies fully with all federal, state and local equal employment opportunity laws.