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Intellectual Property Specialist

3 months ago

Hartford, United States Coda Search│Staffing Full time

Description


We’re looking for a detail-oriented, highly motivated IP Specialist eager to gain hands-on, practical legal experience working for an innovative firm. You’ll get the opportunity to handle a variety of intellectual property issues as well as assist and interact closely with talented attorneys handling trademark and patent prosecution and portfolio management.


You’ll largely operate independently to prepare correspondence to and communicate with clients regarding upcoming deadlines, prepare and submit electronic filings with the United States Patent & Trademark Office (USPTO), and communicate with foreign law firms to manage trademark and patent filings in foreign countries. You will also use your business acumen, strong work ethic, and excellent communication skills to strengthen relationships with clients and problem-solve in a collaborative environment.



Job Responsibilities:

  • Reviewing client dockets for upcoming deadlines, preparing correspondence to clients notifying them of deadlines and the requirements therefor, and following up with them as needed;
  • Preparing electronic forms for trademark filings in the USPTO, including trademark applications, responses to office actions, extensions, statements of use, declarations of use and incontestability, applications for renewal, and specimens of trademark use;
  • Preparing electronic forms for trademark filings in the World Intellectual Property Office (WIPO), including international applications for registrations and other miscellaneous WIPO filings;
  • Communicating with foreign law firms to provide instructions for filing and prosecuting foreign trademark applications and to address their requests for powers of attorneys and other filing information;
  • Assisting in trademark clearance searches, including conducting searches in the USPTO and Saegis databases;
  • Preparing electronic forms for patent filings in the USPTO, including provisional and utility patent applications, information disclosure statements, and responses to office actions;
  • Preparing formal documents for patent filings in the USPTO, including declarations, powers of attorney, assignments, and other formal documents as required by foreign patent offices; and
  • Maintaining and organizing electronic patent and trademark files.


Job Skills & Qualifications:

Preferred:

  • Ability to handle multiple projects independently, meet deadlines, and be a strong team player as part of a client-oriented team; and
  • Strong attention to detail, excellent communication (both written and verbal), organizational and interpersonal skills.

Requirements:

  • Ability to prepare and electronically file trademark and patent documents in the USPTO;
  • 2-3 years of intellectual property experience, including using an IP practice management system in a law firm or IP corporate legal department setting;
  • Experience with monitoring patent and trademark dockets; and

Proficiency with Microsoft Office (e.g. Word and Excel) and billing software(s).