Patent or/and Trademark Docketing

The IP Docketing Specialist provides electronic-based, timely, detailed, and accurate docketing support to the client s IP paralegal & docketing unit. The docketing associate (or specialist) accurately maintains the docket records according to established policies and procedures (SOP), performs all functions relating to the review of documents, and exercises discretion and confidentiality as per the service level agreement.

Job Responsibilities:

• Reads, comprehends, and dockets the incoming emails & correspondences from the Patent and Trademark Office (US and Non-US) for the respective worldwide customer using electronic procedures.
• Opens new matters, including identifying matter type for rule sets, and enters key bibliographic information with accuracy (e.g., priority application information, inventor names, assignee names, etc).
• Identifies corner cases efficiently and dockets after calibration with the Docketing manager or as per SOPs.
• Identifies the critical dates and key information in less commonly docketed documents and effectively safeguards the clients and the law firms from docketing risks, even when there is no defined docketing protocol in SOP.
• Confirms the accuracy of abandonment instructions with the client s IP operations lead and handles formal abandonment procedures in the docketing system for matter files.
• Runs basic queries, generates, and formats Excel reports for consistency calibration and audits for matters docketed.
• Validation of prosecution data with respect to its accuracy and completeness by comparing the data residing in the docketing system and data from public data sources (Global Dossier, USPTO Patent Centre, ESPACENET, etc.)
• Understands and explains docketing policies, procedures, and rules to other team members during monthly/quarterly docketing process reviews.
• Performs other tasks or duties as assigned by the Account & Delivery manager.
• Maintains strict confidentiality of all documentation processed.

Qualification for the position:

Education

The position requires a bachelor s or master s degree in any subject.

Experience

The position requires a minimum of two (2) years and maximum six (6) years of either Patent or Trademarks docketing.

Knowledge, Skills, and Abilities

• Demonstrated ability to follow written and oral instructions in the English language, including excellent spelling, grammar, and punctuation.
• Demonstrated ability to organize and prioritize work in a dynamic and complex environment to meet deadlines and daily requirements, while maintaining a high level of accuracy
• Ability to apply IP subject matter knowledge, analyse and interpret data from prosecution standpoint.
• Intermediate knowledge of MS suite, particularly related to the use of Outlook features and Excel formatting
• Technical proficiency in one or more popular web-based docketing system
• Demonstrated attention to details.
• Patience and perseverance to learn the subject matter and skill in use.
• Proficiency in legal research and use of legal databases.
• Orientation towards continuous process improvement is a good to have.