Ip Assistant

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IP Assistant

The candidate will be responsible for: Prepare complex, multi-document USPTO filings daily, including review based on filing checklists, entry into electronic IP Quality Assurance Department log for double-checking, edits if applicable, routing to attorney for final review, submission of filing, and reporting of filed documents to client via email. Manage a heavy trademark prosecution docket, including U.S. and foreign marks and renewals. Correspond with foreign counsel and clients to provide letters containing substantive attorney input on actions, and to effectuate all foreign trademark prosecution. Interface with Foreign Filing Department regarding foreign patent applications to ensure all documents required to complete foreign/international filings for the day are received and to answer client-specific questions. Daily review of incoming USPTO electronic correspondence and other documents received via postal mail to prepare correspondence reporting all new documents and deadlines to clients. Send requests/instructions and interface with internal staff or outside vendors to create patent illustrations and Information Disclosure Statements. Independently and proactively handle non-substantive U.S. docket items such as formalities documents, transfer of rights via assignments, and other administrative client portfolio management. Make calls to the USPTO to follow up on the status of filed documents such as Petitions and to confirm with formalities officers and patent examiners regarding any discrepancies from normal patent office requirements. Create “shell” response documents/letters for attorneys to complete, incorporating pending case/claims information and a summary of the rejections set forth by the patent/trademark office. Send case information updates to Docketing Department for CPI, IP Quality Assurance Department for IPDAS, and Accounting Department for CMS. Complete any administrative arrangements required by the timekeepers, e.g. check/reimbursement requests, travel arrangements, print requests, time entries, processing/edits to pre-bills, interfacing with Accounting to resolve any payment issues or misinformation on bills. Respond to client requests regarding billing issues, processing/creation/analysis of client status reports/research projects as requested. Review attorney docket reports from CPI for upcoming deadlines and provide heavy docket follow-up and management for the IP Partner. Work with IP Paralegal to clear/update trademark and IDS docket. Review Daily Docket Clearance reports for deadlines pertaining to timekeepers' cases, check on status, discuss with attorney if necessary, ensure all deadlines are met, and respond to Clearance report to ensure action status is updated in CPI to avoid past-due deadlines. Organize and prepare files, docket information, and action items for incoming and outgoing file transfers. Review any changes to USPTO rules and accompanying filing/docketing procedural changes provided by the IP Procedures Committee. Conduct legal research as needed to review USPTO rules and requirements, for instance in the Manual of Patent Examining Procedure, with support from IP Quality Assurance Department. Should have 3+ years of patent and trademark prosecution experience, preferably in a high-volume law firm environment. Should have strong organizational and prioritization skills, ability to manage and organize all facets of an IP Partner’s practice, with excellent follow-up skills, the confidence and knowledge to synthesize information and work independently, the ability to stay calm under pressure, and should be team-oriented.

Additional Information

Job ID 2020-2355

Company info

Nelson Mullins Riley & Scarborough LLP
One Post Office Square 30th Floor
Boston
Massachusetts
United States 02109
Website : http://www.nelsonmullins.com/