IP Specialist

Polsinelli; Houston (TX); On-site; USD 85,000 - 120,000; Full time

Job summary

Polsinelli PC seeks an IP Specialist in Houston to manage docketing and patent prosecution for client portfolios. The role emphasizes coordinating invention harvesting, drafting and filing with the USPTO, and maintaining accurate client documents.

The position requires at least 5 years in IP, strong organization, and proficiency with InTapp and MS Office. You will support multiple IP practice areas including Trademark and Litigation as part of a busy docket in a dynamic firm environment.

Qualifications

• 5+ years of IP experience.
• Knowledge of IP rules and procedures.
• Strong verbal and written communication skills.
• Accurate drafting and editing of documents.
• Detail-oriented with calendaring and travel planning.
• Proficient in IP docketing systems and MS Office.

Responsibilities

• Manage docket and patent prosecution for assigned portfolios.
• Coordinate invention harvesting meetings and patent tasks with client and team.
• Prepare and circulate reporting letters to clients or vendors.
• Draft patent prosecution templates and file with USPTO.
• File US patent applications with USPTO and monitor deadlines.
• Review patent communications for errors and expiration dates.
• Update IDS charts and client portfolio spreadsheets as needed.
• Other duties as assigned.

Skills

IP docketing

Attention to detail

Communication skills

MS Office proficiency

Typing speed

Education

Bachelor's degree

Tools

IP Docketing System (InTapp)

Chrome River

iManage

Adobe

Microsoft Word

Excel

Outlook

Job description

Polsinelli does not accept unsolicited resumes from search firms or agencies. Please, no phone calls or emails.

At Polsinelli,What a Law Firm Should Be is not just our tagline, it is what we live every day. We strive to create an environment where our team members are encouraged to bring their creativity and professional passions into the workplace so that they can thrive. Are you a people person who has a keen eye for detail, thrives in a professional environment and wants to be part of a dynamic team? We have the perfect role for an engaging professional like you!

Polsinelli is hiring and has an opening for an IP Specialist in the Houston office.

CORE RESPONSIBILITIES

• Responsible for billing 750 hours/year
• Maintain secondary docket and case and file management, including uploading email communications and documents to docketing and DMS systems, as well as maintaining and updating files and client portals and attending any status meetings
• Effectively set priorities, meet deadlines and manage multiple projects, including preparation and maintenance of internal docket reports, charts, and to-do lists
• Create, edit, format, and proofread documents, memoranda, correspondence, spreadsheets, and presentations with the highest level of accuracy and attention to detail
• Prepare and circulate reporting letters to client(s) and/or outside counsel or vendors

Non-Billable Duties

• Coordination of client estimates and accruals, as well as invoicing process
• Maintain and update files, including file openings and conflict checks in InTapp
• May assist with drafting engagement letters
• May assist with intake activities
• Responsible for scheduling and coordinating travel arrangements (Attorney travel)
• Responsible for overseeing invoice payments/expenses/reimbursements
• Coordinate tracking of CLE for assigned attorneys
• Other duties as assigned

Billable Duties (by assigned IP practice area)

• Manage docket and patent prosecution practice for assigned client portfolios
• Assist with coordination of invention harvesting meetings and patent prosecution tasks with client and team
• Prepare and circulate reporting letters to client(s) and/or outside counsel or vendors for notices issued by the USPTO and other patent offices
• Draft patent prosecution templates, such as formalities, and electronically file with USPTO
• Compile, upload, and electronically file US patent applications with USPTO
• Review filed and issued patent communications to identify any errors or required corrections
• Review issued patents for errors, determine expiration date of patent, and prepare certificate of correction, if necessary
• Review, prepare, monitor and update IDS charts and/or client portfolio spreadsheets as needed
• Other duties as assigned

Trademark

• Manage docket and trademark prosecution practice for assigned client portfolios
• Assist with coordination of trademark searches, maintenance reminders, and trademark prosecution tasks with client and team
• Prepare and circulate reporting letters to client(s) and/or outside counsel or vendors for notices issued by the USPTO, WIPO, TTAB, Foreign Trademark Offices, and Copyright Office
• Draft trademark maintenance reminders
• Other duties as assigned

Litigation

• Coordinate project files, including drafting internal and external communications related to ongoing litigation tasks
• Draft and transmit legal documents, memoranda, and correspondence to clients, witnesses, and court officials by electronic filing, fax, email, mail, and/or messenger
• Assist in setting up review databases and archiving data as needed
• Analyze and generate reports from data, ensuring accurate and efficient data handling
• Draft basic search queries and collaborate with attorneys to identify relevant documents
• Conduct thorough Quality Checks (QC) on document productions to ensure accuracy
• Assist with calculating and managing litigation timelines
• Potential travel for assistance at depositions, mediations, and trials
• Other duties as assigned

SKILLS AND EXPERIENCE

• 5+ years of related experience
• Knowledge of specific Intellectual Property rules and procedures, as well as keeping abreast of department guidelines
• Exceptional verbal and written skills, as well as administrative and management skills
• Exceptional typing skills; ability to draft and/or edit documents accurately and quickly
• Critical thinker who works efficiently, using available technology and strives to simply tasks and enhance efficiency.
• Ability to pay attention to the minute details of a project or task (i.e. calendaring, meeting coordination, timesheet entries, travel plans, file openings)
• Proficient in IP Docketing System, InTapp, Chrome River, iManage, Adobe, and Microsoft programs Word, Excel, and Outlook
• Annually complete eight (8) hours of continued technical education through the firm’s training department, including, but not limited to, IP Department-specific training

Polsinelli PC is an Equal Opportunity Employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, national origin, disability, protected veteran status, or any other characteristic protected by law.

Qualifications

Behaviors

Preferred

Team Player : Works well as a member of a group

Loyal : Shows firm and constant support to a cause

Detail Oriented : Capable of carrying out a given task with all details necessary to get the task done well

Dedicated : Devoted to a task or purpose with loyalty or integrity

Motivations

Preferred

Self-Starter : Inspired to perform without outside help

Flexibility : Inspired to perform well when granted the ability to set your own schedule and goals

Ability to Make an Impact : Inspired to perform well by the ability to contribute to the success of a project or the organization

Education

Preferred

Bachelor's or better.

Experience

Required

5 years: Related experience.

Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities
This employer is required to notify all applicants of their rights pursuant to federal employment laws.For further information, please review the Know Your Rights notice from the Department of Labor.