IP Docket Specialist

Barnes & Thornburg LLP•Indianapolis, IN

10d•Onsite

About The Position

Under direct supervision and according to established policies and procedures, the IP Docket Specialist reviews incoming mail from the USPTO, foreign associates, and clients, enters relevant due dates into the docket system, compiles reports, and performs related docketing functions. The role supports domestic and foreign patent prosecution matters and helps maintain accurate, complete IP docket records. The position may also assist with training and second-eye review of IP Docket Clerks’ work. The employee must satisfactorily perform the essential duties, with or without reasonable accommodation. Duties may change based on firm needs. The role is performed in a normal office environment, with little exposure to excessive noise, dust, temperature, or similar conditions. Work occasionally requires a high level of mental and visual effort when processing a high volume of tasks and meeting deadlines. Barnes & Thornburg is committed to equal employment opportunity and complies with applicable federal, state, and local laws. The firm’s policy covers recruiting, hiring, training, promotion, compensation, benefits, termination, and other terms and conditions of employment.

Requirements

High school diploma required.
Minimum five years of IP docketing experience.
Advanced understanding of the patent prosecution process and associated correspondence and deadlines.
Strong background docketing both foreign and domestic patent prosecution matters.
Knowledge of CPi software and patent prosecution terminology, including deadlines associated with U.S. and foreign intellectual property matters.
Exceptional attention to detail and good analytical and critical-thinking skills, including the ability to identify important information for accurate docket entry.
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 for communicating with attorneys, staff, foreign associates, and USPTO representatives in person, by email, and by telephone.
Ability to maintain client confidentiality.

Nice To Haves

Bachelor’s degree preferred.

Responsibilities

Monitor the docketing inbox and docket patent prosecution notices and correspondence received from foreign agents or the USPTO.
Maintain the CPi database for the IP Department’s patent prosecution files, including client, inventor, foreign associate, and attorney information.
Download daily mail from PAIR.
Compile reports for attorneys and their assistants as needed.
Follow up with attorneys, paralegals, and assistants regarding loss-of-rights dates.
Promptly clear docketed dates as tasks are completed.
Add new matters to the docket system as they are opened.
Review and docket newly filed applications.
Maintain the data integrity of the CPi database.
Assist with training and second-eye review of IP Docket Clerks’ work product.
Perform other related duties as required.