IP Client Transition Specialist

Cooley • San Diego, DC

2d

About The Position

IP Client Transition Specialist Cooley is seeking an IP Client Transition Specialist to join the IP Services team. Position Summary : The IP Client Transition Specialist (IP CTS) is responsible for coordinating the intake process for incoming/new clients and matters, as assigned, including incoming lateral IP timekeepers and IP administrative tasks related thereto. The IP CTS is also responsible for administrative tasks related to Patent and Trademark, Copyright, & Advertising (TCA) clients/matters transferring out of the Firm. In addition, the IP CTS is responsible for assigned special projects, which may include database maintenance and clean-up and back-up IP docketing support. Specific duties and responsibilities include, but are not limited to, the following:

Requirements

• After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
• Available to work overtime, as required
• 3+ years of relevant IP experience
• Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs
• Ability to work independently and under pressure/tight time constraints
• Creative and entrepreneurial approach to problem-solving and process improvement
• Flexible and agile, ability to reprioritize with changes in the business
• Strong initiative and a get-it-done attitude
• Excellent communication and interpersonal skills

Nice To Haves

• Experience with e-discovery/electronic records review software
• Bachelor’s Degree
• Previous law firm experience
• Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
• Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

Responsibilities

• Coordinate intake process for incoming lateral IP timekeepers and clients, new IP client portfolios or new matters for existing clients, including submitting subject matter conflict checks and requesting client/matter numbers from the Business Intake and Conflicts Department (BIC), assigning patent docket numbers, requesting physical files and labels as needed, and manually entering prosecution, opposition, dispute, domain name, and/or copyright matters into the IP Management System (IPMS)
• Organize, as needed, for incoming counseling matters
• Responsible for auditing IP data and updates in the IPMS for intake projects following import of electronic docketing data received from prior counsel
• Coordinate with the Information Governance Department (IG) to ensure physical files are labeled and electronic records material received from prior counsel are promptly imported into new client/matter workspaces in the document management system
• File internal intake related email communications (e.g., with client teams, BIC, IG) and documents in designated client administrative matter workspace in the document management system
• Coordinate process for transferring IP prosecution matters from one Firm client to another new/existing Firm client, including requesting new client/matter numbers from BIC, assigning new patent docket numbers, requesting new files and labels as needed, updating the IPMS, and ensuring IG handles movement of contents in the document management system to new client/matter workspaces
• Coordinate and process same for counseling matters, as directed
• Coordinate with BIC to ensure former client/matter numbers are inactivated in 3E system, as instructed, and with Finance/Accounting to move any unbilled time to new client/matters in 3E
• Upon receipt of transfer instructions from client and/or notification of client disengagement or some other situation prompting a need to transfer out matters, coordinate the process, along with IG, IP client teams and colleagues for assigned IP client/matters transferring out of the Firm
• Conduct physical and/or electronic IP records review, as assigned
• Update data in the IPMS upon confirmation from IG that transfer of all physical and/or electronic records materials have been completed
• Coordinate with IP Services Systems team, as needed, for processing of transfer script requests
• Communicate with IP client teams on progress of transfers out throughout course of each project

Benefits

• Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.
• We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and/or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and/or adults and other parental support benefits.
• In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off (“PTO”) and 10 paid holidays each year.
• We provide generous parental leave and fertility benefits.
• New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level