Intellectual Property Docketing Specialist

Ice Miller LLP•Columbus, OH

36d•$80,000 - $100,000

About The Position

The IP Docket Specialist will assist with entering and maintaining data in the Firm’s docketing database and execute special projects relating to the Intellectual Property team. The employee must be capable of working in a fast-paced environment, with time-sensitive materials, and maintain strict confidentiality due to the nature of the position.

Requirements

Advanced knowledge of domestic and international patent and/or trademark prosecution rules, procedures, and terminology; experience with docketing PTAB and TTAB matters.
Proven ability to docket consistently; ability to identify similar types of actions despite varying terminology across foreign jurisdictions, identifying the appropriate action from pre-set Actions, and docketing accordingly to ensure consistency.
Adept at researching and navigating patent and trademark office websites such as Patent Center, Trademark Center, WIPO, ESPACE, IP offices from foreign jurisdictions and other sources of patent and trademark information.
Ability to independently determine priority dates, calculate due dates, and verify terms in docketing database.
Experience with intellectual property docketing software systems, preferably CPi and AltLegal.
Ten years of docketing experience required, with at least five years of law firm intellectual property docketing experience.
Exceptional attention to detail, proven decision-making skills and ability to recommend appropriate decisions.
Ability to communicate in a professional manner with all levels of the organization.
Ability to learn new tasks quickly and work independently or as a part of a team.
Ability to maintain confidentiality.
Ability to organize and prioritize work, handle multiple projects and meet deadlines
Proficient in Microsoft Outlook, Word and Excel.
Must be able to perform all essential duties.
High School Diploma required.

Responsibilities

Review, analyze, and process incoming correspondence and input data in the Firm’s docketing database; docket dates in connection with patent and trademark application filings, formalities, substantive actions, maintenance fees.
Download electronic correspondence and/or circulates incoming communications from USPTO, WIPO, foreign patent offices, or foreign agents to appropriate attorney teams in accordance with firm’s IP Procedure and Docket Manual.
Open new records in patent and trademark docket database.
Prepare and distribute firm-standard and custom docket reports.
Proactively monitor due dates to ensure deadlines are timely met, including daily monitoring for final deadlines.
Assist with file intake and transfers in connection with new clients, attorney hires, or change in counsel.
Evaluate and respond to internal docketing-related inquiries.
Coordinate monitoring and payment of patent annuities and maintenance fees.
Participate in docket team meetings and meetings pertaining to special firm projects.
Provide back-up support to other docket specialists as needed.
Assist with IP projects and other related items as needed.