IP Docket Specialist

Barnes & Thornburg LLP•Indianapolis, IN

23h•Onsite

About The Position

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.

Requirements

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).
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.

Nice To Haves

Experience with PracticeLink preferred but not required.

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.