IP Docketing Clerk

Job Description:

Essential Duties and Responsibilities

• Review and docket all incoming U.S. correspondence from the Patent and Trademark office.
• Update CPI when new rules come into effect for U.S. applications.
• Create file records in CPI, calculating and recording all deadlines for U.S. applications.
• Update CPI for abandoned files, transferred out files, transferred in files, and changes of attorneys on files for U.S. records.
• Communicate all relevant dates (both written and verbal) to attorneys - docket reports are printed to attorneys monthly and daily docket deadlines are communicated verbally.
• Must receive e-mail or verbal confirmation from attorneys that daily dockets are being taken care of and can be closed out. ALL DOCKETS SHOULD BE CLOSED OUT ON A DAILY BASIS. DOCKETS SHOULD NOT BE LEFT OPEN PAST THEIR EXPIRY.
• Assists with IP filings with the USPTO and associated tasks.
• Assists with and generates documents for filing with USPTO and other governmental agencies.
• Generates IDS’
• Other tasks as may be required relating to patent and other IP filings.
• Prepare and maintain specific custom client case list.
• Read all incoming U.S. faxes and docket relevant dates relating to files.
• Maintain and monitor all incoming U.S. mail that hasn’t been matched up to the file and ecopy the outstanding mail to the attorney working on the file within a week of receipt. (Mail waiting for files needs to be reviewed daily, so that deadlines are not missed)
• Forward all notices of missing parts to U.S. Patents Legal Assistant for client reporting and preparation of requested missing documents or reminder letter if documents were already sent to the client.
• Proof reading and client reporting of the U.S. filing receipt. (Forward copy of letter to U.S. Patents Legal Assistant so that he can prepare and forward to client Power/Declaration and Assignment in anticipation of responding to missing parts).
• Proof reading and client reporting of the assignment recordal.
• Review and client reporting of the Notice of Publication.
• Verify all cited references were received with office actions and if applicable, forward reference sheet to foreign paralegal.
• Preparation of letter to client reporting the deadline for issue and publication fees. (Forward a copy of the letter to U.S. Patents Legal Assistant so that he can verify that all fees are paid by deadline).
• Preparation of letter to client reporting the Issue Notification.
• Preparation of letter to client reporting the Letters Patent.
• Other tasks and projects as assigned.

Job Requirements:

Qualifications

• Thorough knowledge of patent docketing procedures.
• Minimum bachelor’s degree or relevant work experience.
• Minimum four (4) years of work experience in a law firm environment, or related professional experience.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Ability to proofread material for contextual, grammatical, typographical or spelling errors.
• Interpersonal skills necessary in order to communicate in person, by e-mail and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.
• Knowledge and experience with the USPTO website.
• Knowledge of and experience with electronic filings with USPTO.
• Strong attention to detail.