IP Docket Specialist

Barnes & Thornburg LLP; Raleigh (NC); On-site; USD 60,000 - 85,000; Full time

Job summary

The role emphasizes accuracy, independent work, and strong communication across attorneys and staff in a fast-paced environment. Some training and collaboration on docket quality are expected.

Qualifications

• Minimum five years’ IP Docketing experience.
• Advanced understanding of patent and trademark 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.
• Excellent interpersonal and communication skills are necessary to communicate with a diverse group of attorneys, staff, foreign associates and representatives from the USPTO.

Responsibilities

• Monitoring docketing inbox and docketing patent and trademark prosecution notices and correspondence received from foreign agents or the USPTO.
• Maintaining CPi database for the IP Department’s patent and trademark 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.

Skills

IP docketing

Attention to detail

Independent work

Communication

Education

High School Diploma

Bachelor's degree preferred

Tools

CPi software

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 trademark matters and TTAB proceedings. Under direct supervision, and according to established policies and procedures, the IP Docket Specialist reviews all incoming mail relating to both patents and trademarks 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 and trademark terminology, and the deadlines associated with US and foreign intellectual property matters.

Key Responsibilities

• Monitoring docketing inbox and docketing patent and trademark 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 and trademark 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 patent and trademark 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). Experience with PracticeLink preferred but not required.
• 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

The above 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.

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.