Intellectual Property Coordinator

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Intellectual Property Coordinator

The candidate will work with firm ethics and conflicts functions to open new clients and new matters, collaborate with other firm functions to timely opening of client and matter workspaces, docket and billing files. Work with other firm functions to ensure client specific IP requirements are met, including entering matters, estimates and matter status into firm and/or client databases and frequently updating. Work with billing function to ensure timely billing and compliance with client invoicing requirements including alternative fee arrangements. Maintain tracking documents for client portfolios to indicate priority and subject-matter related applications, including monitoring pending claims across global patent portfolios and coordinating cross-citing of prior art references. Assist with researching and responding to inquiries from clients relating to billing, budget tracking, estimates and matter status. Review and submission of IP-related third-party invoices for payment and USPTO deposit account fees. Communicate frequently, in writing and orally, with IP legal team and other firm functions. Other duties and projects as assigned. Prepare and provide IP Partners and practice support management periodic status reports on the outstanding issues and projects this position handles that are critical to the smooth functioning of the IP Group including all aspects associated with new matter intake and IP prosecution. Act as an advocate for the IP team this position supports by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion. Assist with IP and firm practice systems reviews and updates. Daily track and clearance of patent prosecution docket, both foreign and domestic matters, for assigned clients. Insure all statutory and non-statutory deadlines are met without fail and provide timely reminders to attorneys and patent agents regarding upcoming deadlines as needed. Prepare and file patent prosecution documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, information disclosure statements, declarations, statements of use and extensions in compliance with USPTO guidelines and reporting filings to clients. Prepare formal documents for review, including declarations, powers of attorney, and assignments, for execution by the applicant or inventor. Coordinate filing of sequence listings and formal drawings prepared by outside vendors. Confirm the status of patent and trademark cases with the U.S. Patent and Trademark Office. Review face and claims of Letters Patent for accuracy. Prepare responses to notices (missing parts, office actions, disclosure statements, etc.). Prepare Notice of Allowance checklists for attorney review. Prepare and file Information Disclosure Statements, maintain prior art reference spreadsheets and tracking documents. College degree is preferred. Should have 5+ years of patent prosecution support experience. Billing experience, including electronic billing is preferred. Experience with prosecution of biotechnology and pharmaceutical sector portfolios is preferred.

Additional Information

Job requisition ID: R223763.

Company info

Hogan Lovells
100 High Street 20th Floor
Boston
Massachusetts
United States 02110
Website : http://www.hoganlovells.com