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Intellectual Property Docket Specialist

3 weeks ago

Boston, United States Binding Minds Inc. (Certified Disability Owned Business Enterprise) Full time

SUMMARY:

The IP Docket Specialist is primarily responsible for providing comprehensive docketing services related to IP prosecution. This position shares responsibility for the integrity, functionality, and stability of the firm’s systems through the accurate entry of vital client and case information into the firm’s docketing system, CPi, and by applying docketing based on country law and/or firm policies and practices. The Docket Specialist will use a high level of quality assurance is conducted to ensure data integrity of the firm’s docket system.

ESSENTIAL FUNCTIONS:

  • Regularly monitors the firm’s Microsoft Exchange public folders to claim patent, trademark, or general matter docket tasks.
  • Regularly monitors the Docket Dashboard to prioritize, review and process assigned docket tasks with high accuracy.
  • Independently performs a comprehensive docket review of assigned physical domestic and/or foreign patent and/or trademark mail received through the US postal service and overnight/foreign couriers with high accuracy.
  • Independently performs a comprehensive docket review of electronic receipts for filings via EFS-Web (patent), TEAS (trademark) and/or eCO Registration System (copyright) and applies updates to the system and firm docket with high accuracy.
  • Independently performs a comprehensive docket review of assigned USPTO Office Actions and applies updates to system and firm docket with high accuracy and distributes by email to mail recipient.
  • Regularly reviews internal requests to add, move or dedocket deadlines and updates the docket with high accuracy.
  • Regularly reviews and processes case status updates with high accuracy based on routine procedures or internal task requests.
  • Regularly adheres to and facilitates firm compliance of established docket policies, protocols, and practices to mitigate risk with little direct oversight.
  • Regularly dockets client-specific actions with high accuracy in accordance with client team preferences.
  • Independently performs a comprehensive docket review of patent and/or trademark matters received through the file intake process and administers docket updates with high accuracy based on firm docket/annuity protocols.
  • Regularly identifies data discrepancies and coordinates corrective action with IP Docket Manager.
  • Regularly seeks clarification of intention where requests do not conform to the firm’s established docket/risk policies and procedures.
  • Regularly provides a high level of quality assurance and system check of docketed tasks.
  • Regularly adheres to established work schedule, and routinely exercises flexibility to meet workload demands.
  • Reviews work processed by peers to verify quality of work products for system integrity.
  • Keeps abreast of current rules and requirements through listservs, research and information obtained through the MPEP, TMEP, USPTO, WIPO, and various foreign offices.
  • Participates in pilot groups and/or user acceptance testing of newly developed or enhanced firm applications to provide feedback.
  • Performs daily download of USPTO eOffice Actions as directed.
  • Performs additional duties as requested or assigned with little oversight.


QUALIFICATIONS:

  • Minimum of three to six (3-6) years of work experience in the field of IP.
  • Strong proficiency in basic computer and database management skills, including Microsoft software applications such as Outlook, Word, and Excel.
  • Proficiency with IP software applications such as CPi and IPDAS.
  • Excellent verbal/written communication and interpersonal skills.
  • Strong time management, prioritization, problem-solving, and organizational skills.
  • Demonstrated ability to work effectively at all firm levels.
  • Ability to adhere to established work schedule, but with flexibility required to respond to workload demands including overtime requests when needed.
  • Punctual and reliable and able to meet set deadlines and work effectively under pressure.
  • Ability to maintain confidentiality of matters and other firm business information.