Summary: The IP Services Assistant will provide support to the attorneys, patent agents, and paralegals while assisting the IP Practice Section to function in a consistent productive manner. The Assistant is responsive and ensures all documents received from clients, foreign agents, official U.S. Patent and Trademark Office “USPTO” and other government agencies are responded to timely and accurately. The ideal candidate ensures all day to day responsibilities are met under established policies and procedures while exercising discretion and confidentiality in maintaining contact with clients, attorneys, and staff.
Essential Duties and Responsibilities:
Ensure that policies and procedures are being followed on a day to day basis in relation to assigned duties and in accordance with established firm guidelines.
Provide support to paralegals within the practice group by assisting with various tasks supporting the trademark practice including but not limited to:
Monitor and follow-up on dates associated with the US and foreign trademark docket, including clearing dates and providing follow-up with attorneys, clients and management in order to provide adequate time to respond.
Reviews attorneys’ client information and ensures that addresses, special instructions, including billing requirements are being followed in accordance with the clients’ standard operating procedures.
Prepare and forward official documents to clients.
Records billable and non-billable hours worked in the firm’s time entry database daily.
Responsible for maintaining and prioritizing work on a daily basis and communicate if unable to meet daily responsibilities.
Preparing and filing trademark applications, extensions of time, statements of use/amendments to allege use, combined declaration and affidavits, and renewals with the USPTO and other duties as assigned.
Receive and act upon client instructions, including confirmation, and/or draft response to client inquiries.
Responsible for communicating and working with foreign associates.
Recordation of assignments and name changes in the USPTO and internationally.
Contribute and share agenda items for discussion at weekly trademark meetings.
Monitoring and reporting on watch service results to clients.
Conducting, ordering, reviewing providing preliminary analysis of trademark search reports.
Create and maintain electronic worksheets and/or databases as needed for clients or as instructed by an attorney or the IP Practice Manager.
Record billable and non-billable hours worked in the firm’s time entry database.
Ensure policies and procedures are routinely followed for assigned duties and in accordance with established firm guidelines.
Provide coverage and support to other team members as needed.
Perform other tasks as assigned.
Knowledge, Skills and Abilities:
Identify and respond to internal and external client inquiries in a timely manner and seek feedback/follow-up as appropriate.
The ability to read and comprehend materials involving legal and technical matters.
Strong attention to detail and with the ability to compose, review, and proofread all work for spelling, grammar, and accuracy.
The ability to communicate effectively verbally and in writing.
Strong organizational skills. Able to work well independently and with others to manage daily priorities while meeting and accomplishing goals.
Demonstrate a keen sensitivity to urgent attorney requests. The ability to exercise discretion and confidentiality in maintaining firm and client information.
Flexibility to manage demands outside of traditional business hours.
Possess a willingness to seek out and accept new responsibilities including professional development opportunities to enhance skills.
EDUCATION AND/OR EXPERIENCE:
A Bachelor’s degree or equivalent experience in a law firm or similar professional services environment.
Minimum one (1) to three (3) years of trademark prosecution experience to have gained experience in filing of applications, affidavits and renewals. International experience is helpful.