IP Professional

Dickinson Wright Professional StaffReno, NV
10hOnsite

About The Position

Staff designated at Dickinson Wright PLLC (“the Firm”) as an IP Professional function as part of the IP administrative team, working with attorneys and staff to manage and prosecute Intellectual Property matters. Essential Duties and Responsibilities: Essential duties and responsibilities of staff designated as IP Professional at the Firm include, but are not limited to: Support clients, attorneys and other staff members by performing an administrative role and handling detail-oriented and critical tasks; Operate a computer, fax software, copy/scanning machine, telephone; Maintain physical and electronic files on behalf of clients; Check daily and extended dockets for assigned attorneys and agents, and take appropriate action; Generate necessary filing documents (e.g., using ePCT or PCT Safe) and file PCT applications; Generate necessary filing documents and file US patent applications (e.g., provisional, utility, and national phase entry); Proof, finalize, and file U.S. Responses and various other responsive documents with the US Patent Office; Generate shell documents, like shell patent applications, shell Responses, shell “action” reporting emails; Generate patent assignments, gather signatures from inventors, and record assignments with the US Patent Office; Generate declarations for US patent applications, gather signatures from inventors, and submit the declarations with the US Patent Office; Perform various corrective actions for US and PCT applications, such as correcting inventor names, correcting applicant names, and changing applicant names; Be professional and consistent enough to generate and directly send client-facing reporting emails; Be primarily responsible for commissioning and managing the filing of non-US patent applications, including gathering necessary documents for filing, seeking and providing powers of attorney, apostilles, certified copies, and the like; Be primarily responsible for identifying, on a quarterly basis, annuities/renewal/maintenance fee dates for clients, interfacing with clients seeking permission to pay, instructing various non-US associates regarding payments and/or directly paying the US Patent Office; Generate non-standard client-requested reports, such as patent family status reports presented in Excel format or in Word tables; Generate national phase entry estimates using IP Global; Bill hours for any of the above-noted tasks for which clients are willing to pay; Should be very familiar with the following locally-run and web-based programs; The Microsoft Office suite of products, specifically Outlook, Word and Excel Private PAIR and Public PAIR of the U.S. Patent Office The Electronic Filing System (EFS) Web U.S. Patent Office Espacenet patent searching of the European Patent Office Should be familiar with at least one docketing program, preferably CPI. Note this position is not required to perform docketing, but the candidate should be comfortable looking up information in CPI or a similar system whose functionality is similar.

Requirements

  • Possess strong analytic, writing and communication skills
  • Possess strong attention to detail, with a high level of focus and organization
  • Work effectively both independently and as a member of a collaborative team
  • Possess excellent interpersonal skills, with an ability to interface with colleagues at all levels
  • Possess the ability to handle stressful situations, a diverse and high-volume workload, and provide value in a professional manner
  • Be flexible and possess problem-solving abilities
  • Possess the ability to manage multiple tasks and priorities
  • Possess the ability to work under pressure as the work occasionally requires a high level of mental effort and strain
  • Be willing and able to work full-time consistent with the needs of clients and the Firm
  • Regular and timely attendance at work when scheduled
  • Be willing and able to maintain client confidentiality and exercise good judgement when making decisions and handling certain situations
  • Be proficient in Microsoft programs
  • Be willing and able to sit at a desk/computer for long periods of time
  • Be willing and able to lift up to ten pounds
  • high school diploma or equivalent is required along with at least 5 years of applicable experience
  • Current working knowledge of CFR rules at the USPTO and in foreign jurisdictions

Nice To Haves

  • Associate’s or Bachelor’s degree preferred
  • Experience with CPI, IPDAS, 3E and NetDocs preferred

Responsibilities

  • Support clients, attorneys and other staff members by performing an administrative role and handling detail-oriented and critical tasks
  • Operate a computer, fax software, copy/scanning machine, telephone
  • Maintain physical and electronic files on behalf of clients
  • Check daily and extended dockets for assigned attorneys and agents, and take appropriate action
  • Generate necessary filing documents (e.g., using ePCT or PCT Safe) and file PCT applications
  • Generate necessary filing documents and file US patent applications (e.g., provisional, utility, and national phase entry)
  • Proof, finalize, and file U.S. Responses and various other responsive documents with the US Patent Office
  • Generate shell documents, like shell patent applications, shell Responses, shell “action” reporting emails
  • Generate patent assignments, gather signatures from inventors, and record assignments with the US Patent Office
  • Generate declarations for US patent applications, gather signatures from inventors, and submit the declarations with the US Patent Office
  • Perform various corrective actions for US and PCT applications, such as correcting inventor names, correcting applicant names, and changing applicant names
  • Be professional and consistent enough to generate and directly send client-facing reporting emails
  • Be primarily responsible for commissioning and managing the filing of non-US patent applications, including gathering necessary documents for filing, seeking and providing powers of attorney, apostilles, certified copies, and the like
  • Be primarily responsible for identifying, on a quarterly basis, annuities/renewal/maintenance fee dates for clients, interfacing with clients seeking permission to pay, instructing various non-US associates regarding payments and/or directly paying the US Patent Office
  • Generate non-standard client-requested reports, such as patent family status reports presented in Excel format or in Word tables
  • Generate national phase entry estimates using IP Global
  • Bill hours for any of the above-noted tasks for which clients are willing to pay

Benefits

  • Dickinson Wright offers a generous benefits package for eligible fulltime employees within our U.S. offices, including health, dental, and vision; 401(k) and profit sharing plans; paid vacation; and parental leave.
  • Additional elective programs include: a health flexible spending account, a health savings account, identity theft protection, a dependent day care reimbursement account, commuter benefits, life and AD&D insurance, short- and long-term disability protection, an employee assistance program, and emergency travel assistance.
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