INTELLECTUAL PROPERTY PARALEGAL

POSITION SUMMARY

The IP Paralegal is responsible for docketing and supporting multiple attorneys in the Firm and is expected to have a high degree of responsibility for project management and implementation to help deliver efficient, responsive and creative results for our clients.

ESSENTIAL FUNCTIONS

Reasonable Accommodations Statement

To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. Reasonable Accommodations may be made to enable qualified individuals with disabilities to perform the essential functions.
 

Essential Functions Statement(s)

• Docket incoming US Patent Trademark Office and foreign filing mail into docketing database; double checking for accuracy. Write effective notes into the database to ensure shared knowledge and historical reference. Routinely apply judgment to ensure that risk management is safeguarded, and docket data is complete and reliable.
• Manage all forms of correspondence to ensure it is accurately entered into the database and record keeping system. Investigate perceived discrepancies and inconsistencies in due dates and dockets; analyze and review mail where response dates are not apparent or where contingencies may exist; report issues and findings to appropriate attorneys and staff.
• Act as resource to attorneys and staff, providing docketing guidance and expertise. Regularly and effectively communicate docket standards, protocols, and procedures to ensure understanding and compliance within department.
• Review outgoing filings; de-docket relevant dates in docketing database; forecast and enter next action.
• Ensure any discrepancies in docket dates and responses are appropriately resolved and corrected.
• Review relevant documents, such as letters, faxes, email, etc., relating to foreign filing responses and de-docket as appropriate; follow through with paralegals and attorneys as necessary.
• Generate regular docket reports and distribute to practice group members.
• Review and follow through on updates to docket report as identified by practice group members, input updates into docketing database.
• Prepare ad hoc docket reports for practice group members and clients, customizing as appropriate. Collaborate closely with practice group members to ensure that client reports are formatted and prepared to meet client needs.
• Collaborate and assist in the regular review and assessment of docketing procedures; participate in and coordinate updates to procedures; develop responsive procedural changes.
• Assist with periodic docket audits and proactively respond to underlying issues.
• Participate in special projects involving docket function or that require docket expertise, historical knowledge, etc.
• Provide in-depth, detailed, and analytical research on docket-related issues and questions; follow through on findings; propose and implement measures as appropriate to improve processes to reduce future risk.
• Prepare and file patent, trademark and copyright applications.
• Communication and coordinate with foreign counsel re foreign filings.
• Prepare, review, edit, proofread and file a variety of documents, pleadings and communications.
• Prepare correspondence to clients.
• Scrupulously review all work product to ensure highest accuracy; routinely apply techniques and procedures to manage details, often working under critical deadlines.
• Actively prioritize work responding to deadlines and changing critical needs.

Supervisory Responsibilities:

This job has no supervisory responsibilities.

POSITION QUALIFICATIONS

Competency Statement(s)

• Integrity/Ethics - Deals with others in a straightforward and honest manner, is accountable for actions, maintains confidentiality, supports company values, conveys good news and bad.
• Communication - Communicates well both verbally and in writing, creates accurate and punctual reports, delivers presentations, shares information and ideas with others, has good listening skills.
• Interpersonal Skills - Has good listening skills, builds strong relationships, is flexible/open-minded, negotiates effectively, solicits performance feedback, and handles constructive criticism.
• Quality - Is attentive to detail and accuracy, is committed to excellence, looks for improvements continuously, monitors quality levels, finds root cause of quality problems, owns/acts on quality problems.
• Sense of Urgency - Prioritizes well, shows energy, reacts to opportunities, instills urgency in others, meets deadlines.

SKILLS & ABILITIES

Education: Associate’s degree in paralegal or legal studies or other related discipline is preferred. An equivalent combination of education and experience is required.
Experience: Minimum of 3 years of legal experience required, and 5+ years in legal experience preferred. Prior IP docket management or IP paralegal experience preferred but not required.

Computer Skills: Skilled with MS Office Suite and other office products.  Experience with Pattsy docketing software is preferred but not required.

Certificates & Licenses: Paralegal certification from ABA-approves program preferred but not required.

Other Requirements: Excellent written and oral communication skills (comprehension & expression). Strong command of the English language, including excellent spelling, grammar, punctuation, form and style. Detail-oriented and ability to create, compose, proof and edit correspondence. Possess sense of initiative and responsibility to manage case load and maintain confidentiality of records and information. Ability to work in a fast paced, high-pressured environment. Excellent problem-solving skills and team mindset. Ability to review incoming and outgoing correspondence and input information in a timely and accurate manner.

WORK ENVIRONMENT

Work environment is in a professional office setting. The majority of activity this role performs will be sedentary work.