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Docketing Manager

3 months ago


Chicago, Illinois, United States Taft Stettinius & Hollister LLP Full time
Taft is currently seeking a Docketing Manager to work in our Intellectual Property Group in Taft's Minneapolis, Chicago, Indianapolis, or Cleveland office.

We are seeking a Docketing Manager who will be responsible for managing patent and trademark matters within the patent/trademark docketing department. This position will serve as an integral part of our leadership team and help drive our firm forward with cutting-edge processes and technology. All Taft employees operate under a "Client First" philosophy-in all things, we seek to provide exceptional services to our clients.

Duties and Responsibilities:

  • Serves as a first level response to questions and problems from the docketing team, attorneys, and staff to enable the Docketing Department and IP Practice to function in a consistently productive manner.
  • Responsible for the overall accuracy and completeness of the docketing of documents that are received from government agencies, including the U. S. Patent and Trademark Office, WIPO, foreign associates (and all others), within the requirements set by the Code of Federal Regulations, Rules of Practices, and/or clients.
  • Maintains a thorough knowledge of the docket database to create specialized reports and make appropriate changes as necessary.
  • Organizes, delegates, and provides follow-up on the performance of routine and more complex assignments by working closely with the docketing staff and management.
  • Ensures daily quality checks are in place to review critical docketing data and coordinates periodic data audits.
  • Maintains regular communication with attorneys and administrative staff to receive feedback, perceptions of docketing quality, and suggestions for improvement; works in coordination with IP leadership team to implement improvements.
  • Regularly reviews team processes to identify new ways to increase both efficiency of the docketing process through improved workflows, automation or other technology and accuracy of data through data validation tools, second eye checks and periodic audits.
  • Ensures team members are developing the skills and knowledge to carry out their roles effectively, identifying skill gaps and implementing necessary training to ensure a consistent approach is maintained across the team.
  • Assesses current processes and procedures with a focus on leading and coaching the team.
  • Identifies opportunities for improvement that result in enhanced risk mitigation and increased effectiveness.
  • Partners with internal and external subject matter experts to continuously update docketing standards.
  • Oversees the integrity of the docket database, which includes accuracy and compliance with the Rules of Practice as governed by government agencies.
  • Establishes and maintains effective working relationships with IP technology and services vendors.
  • Maintains knowledge of trends, developments, and legislative rulings impacting trademark administration; keeps up to date on USPTO procedural changes; performs research to clarify trademark rules; and serves as an internal expert on IP procedures and regulations.
  • Leads special projects related to attorney and client onboarding/off boarding, portfolio reviews and RFP's.
  • Responsible for the compilation of information for the Docket Manual and for the accuracy and completeness and maintenance of the Manual.
  • Works closely with each office to coordinate the workflow to expedite the transfers of applications without causing risk to the IP Practice
  • Identifies policies and procedures that can be improved and suggests operational enhancements of the Docket Department; documents and communicates changes to docketing policies and procedures to management.
  • Sets performance expectations and measurements for the docketing department staff.
  • Works within the guidelines of established IP principles and practices.
  • Immediately reports all risk management-related concerns to management.
  • Maintains high standards for internal/external client service and quality control.
  • Nurtures new ideas and concepts. Identifies, leads, and manages innovative approaches to business challenges and works with firm leadership to evolve operations and system processes that increase efficiency and mitigate risk.
  • Recommends and implements process improvements and changes directed to increasing efficiency and improving service levels.
  • Performs other duties as assigned by Firm leadership.

Qualifications:

  • Bachelor's degree required.
  • At least 5 years' experience working with intellectual property docketing systems and management. Experience with Foundation IP a plus.
  • Proficiency in various docketing applications. Prior experience with sophisticated IP docket software required (e.g., Inprotech, CPI, Patricia, Foundation IP, IP Manager).
  • Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, EFS, TSDR, TEAS), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions.
  • Working knowledge of rules according to USPTO procedures, 37 C.F.R., and the Manual of Patent Examining Procedure (MPEP) rules.
  • Ability to work effectively and collaboratively as a team leader and member.
  • Ability to interpret, clearly communicate, and effectively enforce policies and procedures.
  • Ability to independently manage and work collaboratively on special projects.

Candidates interested in the Chicago office should apply here.

Candidates interested in the Cleveland office should apply here.

Candidates interested in the Indianapolis office should apply here.

Candidates interested in the Minneapolis office should apply here.

Taft is a State of Minnesota and City of St. Paul Affirmative Action Employer as required in those jurisdictions. Taft is an Equal Opportunity Employer. The information in this posting presents general duties, tasks, and responsibilities but is not intended to be an exhaustive listing.Taft Stettinius & Hollister LLP participates in E-VERIFY.