IP Coordinator

  • Location
    Miamisburg, Ohio
  • Category
    Legal Support Personnel - Legal Secretary/Legal Assistant
  • Contract Type
    Direct Hire
  • Reference
    US_EN_66_872276_2881690

Special Counsel is recruiting an IP Coordinator for the Dayton office of a National law firm. This position will apply knowledge of patent prosecution processes, procedures, and filing requirements to assist supported timekeepers and to independently prepare prosecution documents, formality documents and client correspondence, and proactively act on items received from the U.S. Patent and Trademark Office to ensure completion of requirements related to patent filing and prosecution. The IP Coordinator position is expected to produce client billable hours of 20 to 30 hours monthly.

Responsibilities:

  • Provide administrative/secretarial support to assigned timekeepers by providing transcription and word processing services, conducting database searches, completing business intake and billing tasks, maintaining electronic and physical files, and preparing status reports.
  • Prepare and upload documents for filing at USPTO, including transmittals/forms, fee calculations, Powers of Attorney, Terminal Disclaimers and Application Data Sheets.
  • Prepare response templates to USPTO Office actions and secure copies of cited references.
  • Prepare draft correspondence to clients reporting the filing of Applications, receipt of Office actions, and filing of Amendments.
  • Manage attorney dockets to ensure compliance with all deadlines and maintain oversight of items to and from docketing personnel; prepare docket reports upon attorney or client request.
  • Prepare inventor/applicant documents (Oath/Declaration, Assignment, Power of Attorney).
  • Proofread filing receipts from USPTO and make corrective filings as needed.
  • Collaborate with and support other secretaries in the IP group, including outside of the Dayton office, in connection with patent prosecution matters.
  • Perform word processing, transcription and/or review of attorney-prepared patent applications, amendments and correspondence (including trademark and copyright infringement matters).
  • Perform administrative functions, including direct contact with inventors to secure execution of documents; update patent and trademark status reports and client databases for select clients.
  • Conduct database searches using various on-line resources and prepare/maintain status charts and reports.
  • Facilitate accounting with USPTO fees and resolve discrepancies.
  • Perform status checks for U.S. and foreign cases and respond to status inquiries from clients and foreign counsel.
  • Investigate the status of client, and monitored competitive, patent and trademark filings.
  • Receive and process incoming invoices and investigate payment status upon request.
  • Perform client billing tasks including entering, revising, and releasing dictated daily time charges, preparing and sending monthly client bills, and investigating payment status upon request.
  • Conduct conflict checks, new client or matter requests, draft engagement letters.
  • Prepare and file Information Disclosure Statements as necessary.
  • Prepare patent application trifolds and maintain physical files and electronic files. Facilitate incoming and outgoing file transfers.
  • Draft correspondence to foreign counsel regarding incoming and outgoing transferred cases.
  • Qualified candidates will be able to work in a busy, fast paced environment and possess a high level of attention to detail. Strong organizational skills and knowledge of USPTO formalities required. High school diploma and at least five years of experience as a patent prosecution secretary in a law firm and/or corporation required.

    Would you like to learn more about the IP Coordinator position that Special Counsel is recruiting for in Dayton, Ohio?  If so, then please submit your resume below.  Or, visit our website at www.specialcounsel.com to apply or consider other available opportunities with us.  



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