Administrative Positions

New Applications Proofer

US Office
  • Proofs new applications for accuracy to include but not limited to reviewing the client letter and all enclosures, reviewing all documents prepared by the team for accuracy and for compliance with Patent Office rules and client special instructions.
  • Receives new applications for initial review and log-in which consists of completing a check list to ensure that all items are enclosed with the client’s order letter and that they are the correct forms.
  • Obtains any missing documents from the various website.
  • Prepares basic non template client correspondence requesting any missing items or to clarify any discrepancies.
  • Sends report letters with enclosures via mail, desk top faxing, e-mail or portal.
  • Prepares Declarations, Assignments and Powers of Attorney for execution and forwards them using template or non-template letters.
  • Must be able to demonstrate an ability to prepare new applications for e-filing in the U.S. Patent Office to include but not limited to preparation of Fee Transmittal forms, ADSs, IDSs, SORs, LORs, POA cover sheets and any other necessary documents along with template correspondence and billing sheets.
  • Must be able to demonstrate an understanding of the Patent Office rules and procedures regarding the information that should be included in all types of new applications, letters and/or filings at any given time.
  • Should have three years of patent experience in the above noted areas.
  • Must be able to demonstrate an ability to excel in detail checking.

Qualifications: Bachelor’s Degree or equivalent or three to ten years related experience and/or training, or equivalent combination of education and experience.

Must have excellent attention to detail, type approximately 35-40 wpm and have keen organizational skills.  Proficient in Microsoft Word applications.

Admin Center Support Specialist

US Office

This position will provide substantive administrative support to the Admin Center.

Essential Duties and Responsibilities:

  • administrative/secretarial services which oftentimes requires strict adherence to confidentiality
  • travel arrangements (working through Ultramar)
  • trip report processing, to include data entry into Access database
  • enter/track/organize invoices, receipts, reimbursements and firm credit card purchases using Chrome River accounting reimbursement system
  • set up meetings as requested, to include ordering lunch upon request
  • filing, copying/scanning, mailings
  • time entry
  • file destruction accountability, to include assistance with archiving of final opinions and processing files for destruction
  • backup assistance with searching/purchasing publications that are requested by attorneys
  • backup assistance with word processing, to include use of firm templates and electronic dictation 

Qualifications:

College degree preferred, 2-3 years of administrative support in professional services environment.  Proficient knowledge and use of MS Word, Excel, PowerPoint and other applicable software applications.  Excellent verbal and written communication skills.  Solid professional judgment.  Organized, detail-oriented and ability to handle competing multiple priorities.  Ability to work independently as well as part of a team.  Must demonstrate an advanced level of English fluency, verbal and written.

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Director of Patent Administration

US Office

The Director of Patent Administration is responsible for overseeing the administrative processes and procedures, and support personnel, of the Patent Prosecution practices of the Firm. The Director of Patent Administration will work closely with the COO,  Practice Group Leaders (PGL) of the Patent Prosecution groups, the General Counsel and the Prosecution Management Committee, to ensure that the firm employs best practices for managing IP portfolios, establishes smart and efficient procedures for providing patent prosecution services to clients, and reduces risk to the Firm. 

During the first year in the role, the Director of Patent Administration will address as key priorities:  the harmonization of internal processes and procedures across all segments and cohorts of the patent prosecution practice, as well as the harmonization of how the patent prosecution legal and administrative work is completed, with an eye towards streamlining processes while harmonizing them; the elimination of inefficiencies in business processes; the full leveraging and smartest use of the Firm’s vast technology resources; and the full and leveraged deployment of all support/administrative staff members who support the practice.

Key responsibilities include, but are not limited to:

• Oversee team of Managers and Supervisors who are over the key patent prosecution functions for both US and foreign matters: IP Operations, Docketing and IP Systems, E/M Patent Prosecution group support staff and Chemical Patent Prosecution group support staff.

• Ensure that all Patent Prosecution administration and professional staff members comply with the firm’s internal procedures as well as the firm’s standards of loss prevention.

• Support the Patent Prosecution PGLs in achieving a best practices approach to all administrative functions in the practice; implement best practices and all practice and procedure changes throughout prosecution and prosecution support areas.

• Oversee firm wide IP training:

  • Lead the redesign of training programs across all areas of Patent Prosecution including practice specific onboarding/training for new hires, practice group, firm and client specific training.
  • With key input from Managers and Supervisors, assess current technology and soft skills training that support and ensure staff are trained in these areas, stressing the importance of working proactively to support attorneys and their legal practice.
  • Create training programs that provide instructions on the firm’s technology including defining best practices, utilization of  agreed upon templates and time-saving tips.
  • Work with Human Resources to create career learning paths that build on a range of identified competencies.
  • Work with Human Resources to institute methods of evaluating and assessing knowledge of the training materials.
  • Act as an IT liaison to preview and promote new technologies to pilot groups, focus groups and the various administrative support staff.

 • Oversee IP Docketing and IP Systems Manager in maintaining and updating firm-wide docketing procedures, including data-entry, file maintenance, and electronic file handing processes with a focus on efficiencies, reconcilliation and quality.

• Communicate with attorneys and staff regarding changes in the US Patent and Trademark Office (“PTO”) and other patent offices, as well as the implications for the firm’s practices & procedures as a result of the changes.

• Oversee and work with IP Operations Manager on client meetings where coverage of administrative matters and tours are required.

• Responsible for budget management and projection for IP Operations, Docketing, E/M Patent Prosecution group and Chemical Patent Prosecution staff.

• Monitor Foreign Associate relationships and manage engagement needs relating to these associates/associate firms.

• Work alongside the other Firm Directors to implement changes and drive strategy and evolution of the Firm and its processes and procedures.  

• Serve as a key member of the COO’s senior team, supporting the COO and the Firm in a variety of capacities and with various projects/initiatives.

Knowledge/Experience Required

Experience as an IP prosecution practitioner or as a high level administrative staff member within a patent prosecution practice, highly valued.

Significant experience managing IP administrative and/or legal staff.

Solid communication skills, verbal and written.

Equal Opportunity Employer

Patent Legal Assistant/Paralegal

US Office

Review, process and file new National Phase, Bypass Continuation and Utility applications to include complete review of client correspondence, identification of missing documents, preparation of formal documents such as Declarations or Substitute Statements.

Review and process all associated formalities after filing of new applications to include Official Filings Receipts, Notices of Publication, Office Actions, responses to Missing Parts, Issue Notifications and Letters Patent. 

Prepare and e-file Supplemental ADSs, Declarations, Assignments, Translations of Specifications, previously prepared Preliminary Amendments, Requests for Corrected Official Filing Receipts, Certificates of Correction as needed.

Prepare and e-file Information Disclosure Statements to include determining whether fees or certification are required. 

Review and process Notices of Allowance to include a complete review of the entire history of the application to verify that there are no outstanding issues that need to be addressed and that all appropriate documents such as Assignments, Declarations, Priority Documents etc. have been filed.  Verify that all information such as inventor information, Applicant information and Application information is correct by comparing it to documents previously filed.  Verify that all Information Disclosure Statements have been considered and that current/allowed claims are correct.

Prepare and e-file payment of the Issue Fee along with any other required documents.

Prepare various reporting letters to include preparation of billing sheets and drafting of basic client correspondence requesting any missing items or to clarify any discrepancies.

Bachelor's degree preferred or combination of work experience and education equivalent.

Advanced understanding of Patent Prosecution required.

Must have excellent attention to detail, type approximately 35-40 wpm and have keen organizational skills. 

Must be able to work independently in an electronic environment including manipulation of documents, running reports, creating correspondence and filings, uploading and downloading documents from electronic sources including the Patent Office website and the firm’s document management system.

EOE

Prosecution Correspondence Specialist

US Office

This position is responsible for processing all incoming business correspondence received both electronically and in hard copy/paper and entering the information into the associated case folder in IP Manager; docketing all applicable due dates and reminders; tracking and updating attorney assignments and changes for newly assigned and re-assigned cases; review of newly opened cases sent to the section to verify information is accurate and forwarding on to appropriate staff member. This position may also need to perform remote work as assigned during firm closure.

Hours for this position are 9:00 AM - 5:30 PM

Bachelor’s Degree or equivalent or three to ten years related experience and/or training, or equivalent combination of education and experience. Must be familiar with patent and docketing terminology, docket management department /firm docket procedures. Must also have excellent attention to detail, type approximately 40 wpm and have keen organizational skills. Proficient English Language skills: ability to read, analyze and interpret client and PTO correspondence and effectively present information to supervisor and co-workers.
Equal Opportunity Employer
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