OVERALL, PURPOSE OF JOB:
The Patent Docketing Specialist is responsible for individual contribution as part of UnitedLex IP Managed Services.
The primary day-to-day focus will be on various patent-related docketing activities.
Candidates should have strengths in teamwork (internal and external stakeholders), quality control, file/docket and problem-solving. They must also have strong interpersonal skills to build strong relationships with internal and external stakeholders.
REQUIREMENTS:
- Strong academic background.
- 0-1 years progressive work experience as a patent docketing specialist at a law firm or (preferred) in-house.
- Knowledge and experience working with the United States Patent and Trademark Office (preferred).
- Excellent written and verbal communication skills.
- Ability to communicate effectively with other professionals in the legal department and business teams.
- Detail-oriented with excellent judgment and analytical skills
- Able to juggle multiple tasks - dynamic, and action-orientated, which meet deadlines and make it happen.
- Ability to work collaboratively with onsite and/or virtual global teams.
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Proficient in Microsoft Word, Outlook, Excel and related software programs
COMPETENCIES:
- Excellent organizational skills including record keeping, data collection, and system information. Ability to compile and furnish concise, detailed information in report format, written correspondence, email, or verbally.
- Must have the ability to build and maintain relationships and work confidently with people at all levels.
- Must be an excellent communicator (written and verbal) with the ability to earn trust and credibility.
- Must have the ability to demonstrate a high degree of confidentiality.
- Must be willing to accept responsibility and make decisions based on experience, education and understanding of business needs.
- A fast learner able to grasp business needs and priorities quickly.
- Critical thinking: able to evaluate information gathered from multiple sources and distinguish user requests from the underlying true needs.
- Possess general legal knowledge and specific client and company operations (preferred)
- Excellent organizational skills, ability to manage multiple assignments at once, and meet deadlines.
- Proficient in technology and tools used by the company and with the client
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Tracking and managing PTO communications including, but not limited to, new applications, Office Action responses, Information Disclosure Statements, assignments, and related ownership transfers, etc., on the docketing tool.
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KEY RESPONSIBILITIES:
- Tracking, entering, and managing patent records on the docketing tool.
- Reviewing documentation as instructed by Patent Attorneys
- Using internal and external databases to obtain patent documentation.
- Supporting annuities and recorder activities
- Supporting the management of Power of Attorney (PoAs)
- Initiating new client matters in the document management systems.
- Maintaining files and documents relevant to applicable matters in the document management system.
- Reviewing patent dockets and deadlines daily.
- Ordering documents, file histories, certified copies, etc.
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Tracking and managing outside counsel/vendor communications and enter relevant information in the docketing tool on:
- Foreign prosecution-related tasks such as preparation and filing of PCT applications and associated non-U.S. prosecution filings.
- Enter the national and regional stage and associate formality requirements specific to each country.
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