IP Docket Specialist

barnes; United States; On-site; USD 60,000 - 75,000; Full time

Job summary

Barnes & Thornburg is seeking an IP Docket Specialist with a strong docketing background in foreign and domestic patent prosecution matters. Under supervision, you will manage incoming mail from USPTO and foreign associates, add due dates to the docket system, and prepare reports for attorneys.

The ideal candidate has at least five years' IP docketing experience, proficiency with CPi software, and a keen eye for detail.

Qualifications

• High School Diploma required; bachelor's degree preferred.
• Minimum five years' IP docketing experience.
• Advanced understanding of the patent prosecution process and deadlines.
• Excellent attention to detail with strong analytical and critical thinking.
• Ability to work independently and in a team in a fast-paced environment.
• Organize and prioritize many tasks to meet deadlines.
• Proficient with Word, Excel, iManage and CPI (CPi).
• Excellent interpersonal and communication skills for diverse stakeholders.
• Maintain client confidentiality.
• Ability to handle high mental and visual workload under deadline.

Responsibilities

• Monitoring docketing inbox and docketing patent prosecution notices and correspondence.
• Maintaining CPi database for IP Department files, updating client and inventor info.
• Downloading daily mail from PAIR.
• Compiling reports for attorneys and assistants as needed.
• Following up with attorneys and staff on loss of rights dates.
• Clearing docketed dates promptly as tasks are completed.
• Adding new matters to the docket system as opened.
• Reviewing and docketing newly filed applications.
• Maintaining data integrity of the CPi database.
• Assists with training and second-eye review of IP Docket Clerks' work.
• Performs other related duties as required.

Skills

IP docketing

Attention to detail

Independent & team work

Communication skills

Confidentiality

Time management

Proactive problem solving

Education

High School Diploma

Bachelor's degree preferred

Tools

Word

Excel

iManage

CPi

CPI

Job description

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.

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.

Working Conditions

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