• IP Docketing Specialist

    Job Locations US-MA-Boston
    Job ID 2018-1793
    Category
    Business Intake
  • Overview

    The Boston office of Nelson Mullins seeks an IP Docketing Specialist to support the Boston intellectual property group. This position reports to the IP Services Manager as a member of the Boston IP Docketing Department.  The IP Docketing Specialist is expected to perform docketing and docket clearance functions based on U.S. and international patent and trademark correspondence and requests.  Docketing Specialists handle each task within the department on a rotating daily schedule and are completely cross-trained to handle all complex functions of the department.   The department is seeking a motivated candidate who is interested in continued learning and professional development and in assuming increased department responsibilities over time.

    Responsibilities

    • Appropriate review of approximately 300 emails per day, including docketing of new actions, closure of completed actions, routing to appropriate attorneys/staff, entering descriptive remarks for case updates or correspondence to/from clients and foreign counsel, and triage/prioritization to ensure all actions are docketed in a timely manner based on urgency.
    • Review of incoming patent and trademark office documents, including docketing new deadlines, entry of new information and calculation of deadlines, review for data accuracy and update/flag of discrepancies for attorneys, and checking to ensure all incoming documentation matches most recent filings in government data.
    • Review and process incoming faxes from foreign countries regarding patent and trademark deadlines or client filing instructions.
    • Generation of reports requested by firm attorneys, clients, or foreign counsel, either via standard reports interface in CPI, or for more complex reports, via usage and generation of SQL queries.
    • Process daily docket clearance reports from IP staff, proactively close docket reminders, proactively close deadlines based on detailed review of incoming correspondence indicating completion, and process other de-docket requests submitted by IP staff.
    • Process outgoing file transfers by closing outstanding docket actions and inactivating cases within the docketing system.
    • Process incoming file transfers by immediately entering shell records and assigning docket numbers, reviewing auto-generated CPI actions and flagging urgencies for attorneys, review of information/docket actions from prior counsel for accuracy and docketing accordingly, confirming responsibility for annuities payments and docketing accordingly, systematically prioritizing to review complete file histories of all cases and enter complete information to fill out the records in CPI, and checking patent office websites where possible to confirm and complete information in each record.
    • Continued audit and cleanup of existing docket data via special projects and standardization; maintenance of accurate case statuses.
    • Ability and willingness to learn process for creation/administration of backend patent and trademark preset actions to ensure consistent docketing across all cases/docketers and avoid free-typing; creation/administration of country law rules set to generate based on filing/grant/priority dates in the application.
    • Ability and willingness to learn CPI database administration, including processing of quarterly updates to country law and database updates when applicable.

    Qualifications

    Ideal candidate has 2+ years of IP docketing experience, preferably in a high-volume law firm environment.  It is imperative that the candidate be a quick learner, have superb attention to detail and communications skills, and work well as a member of a team.  Candidate should also have strong organization and prioritization skills, the confidence and knowledge to synthesize information and work independently, and the ability to stay calm under pressure.  Experience with CPI is a plus.

     

    PM17

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