IP File Transfer Coordinator

Barnes & Thornburg LLP•Indianapolis, IN

1d•Onsite

About The Position

Under direct supervision, and according to established policies and procedures, the IP Assistant & File Transfer Coordinator’s primary objective will be facilitating, coordinating and supporting the necessary intra-departmental activities required for timely and efficient intake of new IP files transferred to the firm in connection with (1) lateral IP attorney intake and (2) IP portfolio transfers from other law firms for existing IP attorneys. The IP Assistant & File Transfer Coordinator will also be responsible for providing overflow and backup support for other IP Assistants in the IP Department, as needed. The IP Assistant performs a variety of docketing, file maintenance, document and correspondence preparation, and other related duties.

Requirements

A qualified candidate should have a minimum of two years’ experience working as an Intellectual Property Assistant with both U.S. and foreign patent and trademark applications, ability to prepare associated documents and correspondence, and have a strong understanding of the life cycles of patents and trademarks, and associated deadlines and procedures.
High School Diploma or GED required, bachelor’s degree preferred.
Minimum of two years’ experience as an IP Legal Assistant, handling both patents and trademarks.
Strong understanding of patent and trademark prosecution process and associated correspondence and deadlines.
Exceptional attention to detail and good analytical and critical thinking skills.
Ability to understand and maintain a daily docket.
Excellent written and oral communication skills, including strong grammar, spelling and proofreading skills.
An understanding of the data requirements of CPi software, patent and trademark terminology, types of IP prosecution matters and a working understanding of how deadlines associated with US and foreign intellectual property matters are processed by IP docketing personnel.
Interpersonal skills necessary to communicate with office staff in new business, accounting and electronic file processing teams, staff of other law firms and lawyers and administrative personnel in firm offices in person, by email and telephone.
Ability to communicate with lateral and firm attorneys and staff, to provide information with courtesy and tact, coordinate assignment of processing tasks and follow up regarding status regarding such tasks.
Must be able to monitor, determine and address sources of firm processing delays in hard copy and electronic file transfer, matter opening and associated docketing.
Ability to maintain client confidentiality.
Proven ability to work independently as well as in a team environment.
Ability to organize and prioritize numerous tasks and complete them under time constraints.
Computer and database skills, including Word, Excel, Outlook and iManage. Experience using CPi preferred but not required.

Responsibilities

Reviews incoming mail for assigned attorney(s) and drafts appropriate correspondence and documents in response.
Reviews and maintains weekly docket; coordinates with attorneys regarding deadlines.
Prepares documents, instruction letters and filings of all direct-filed foreign applications.
Coordinates execution and legalization of U.S. and foreign formal documents, as required.
Prepares U.S. and foreign reporting and reminder letters.
Prepares and electronically files with the USPTO documents such as, but not limited to: new applications, Statements of Use, Extensions of Time, Information Disclosure Statements, Issue Fees, Formal Drawings, Assignments, Declarations, Extensions of Time, Powers of Attorney and Responses to Office Actions.
Prepares docket and portfolio reports as requested.
Performs detailed review of incoming data and deadlines.
Prepares data for entry, either manually or by data import, into docket system. This may include locating and inserting missing information as available through public data sources.
Coordinates with Accounting to open new matters and assign matter numbers to each record.
Adds new matters to the docket system, either manually or by data import.
Performs detailed review for accuracy of new records.
Enters deadlines provided by former counsel into docket system, and verifies accuracy.
Enters deadlines according to internal docketing procedures into docket system, and verifies accuracy.
Prepares and runs CPi reports as requested.
Maintains CPi Auxiliary Tables to ensure accuracy.
Maintains data integrity of the CPi database.
Notifies foreign counsel of change of representation.
Prepares and files new Powers of Attorney in US and PCT applications and patents.
Prepares and files Change of Representation in US and Madrid applications and registrations.
Coordinates intake of electronic files from former counsel with BT’s File-Intake team.
Coordinates review of annuities status with Annuities Supervisor.
Other tasks as required.