IP Patent Docketing

At ArentFox Schiff, we know that diverse backgrounds produce different perspectives, richer thinking, and more creative solutions to the challenges our clients face. We hope you share that vision. Join us and take on the challenge of doing meaningful work while helping us build a culture that reflects our dedication to diversity, equity, and inclusion.

LOCATION:

**This position is available in any of the following office locations – Boston, MA, New York, NY, Washington, DC, Los Angeles, CA, San Francisco, CA**

JOB TITLE: IP Patent Docketing & Technology Systems Manager

DEPARTMENT: IP Administration

REPORTS TO: Chief IP Officer

FLSA CLASSIFICATION: Exempt

JOB SUMMARY

This highly visible position provides management support and leadership for the IP Patent Docketing and IP Technology Systems teams. Responsible for the analysis and development of departmental docketing processes, development and documentation of docketing process workflows and procedures, benchmark current docketing processes with industry standards and propose improvements where applicable. Ensure overall performance, maintenance and security of the firm’s IP technology meet expectations. Provide department oversight of the installation, configuration, and upgrade of IP software. Facilitate various operational tasks, including quality assurance, training, and ad hoc project work. Ensure appropriate workloads and work quality is achieved in compliance with Firm policies and procedures.

ESSENTIAL DUTIES AND RESPONSIBILITIES*

Docketing Management

• Establish and monitor productivity and quality measurement standards for staff and ensure compliance. Regularly report performance levels to senior management.
• Work with practice group leader and senior management to develop and implement uniform docket procedures across all Firm offices based on industry best practices. Ensure strict compliance in all offices.
• Manage new matter intake process for patent matters, including delegating and directing cross-departmental teams (Docketing, Records, Accounting, etc.); communicate and coordinate with timekeepers and clients to develop appropriate workflows, procedures, and requirements for new client portfolios.
• Perform internal and external audit reviews of patent client portfolios to ensure integrity of information in database. Develop and implement audit review methods.
• Develop and maintain Patent Docketing Procedural Manual, Patent Docketing User Manual and Patent Docketing Client Guidelines.
• Update and maintain software system documentation for docketing software and communicate any updates to IP Department as required.
• Establish a training program for patent docketing staff on departmental and Firm software and departmental policies and procedures; conduct ongoing docketing training classes.
• Act as primary liaison between IP Patent Docketing and IP timekeepers and staff in all Firm offices. Troubleshoot and respond to questions or concerns pertaining to patent docketing.
• Communicate with timekeepers and staff regarding significant changes in the USPTO and foreign filing requirements. Manage and update service levels to ensure compliance to USPTO and client guidelines.
• Participate in strategic planning and manage the implementation of various patent IP projects throughout all offices.

Technology Systems Management

• Coordinate and oversee the installation, configuration, maintenance, and upgrade of IP software. Troubleshoot software performance issues and ensure compliance with technology security objectives.
• Review, test and approve all systems and programs prior to implementation.
• Provide user-level technical support to timekeepers, staff and clients, either directly or indirectly.
• Analyze business, user and client needs, document requirements and translate into proper system requirement specification.
• Monitor and coordinate system updates, including quarterly updates, workflow changes, new terms, new diary fields, reports, etc. through completion. Monitor system integrity, investigate inconsistencies and make recommendations for proper quality improvement.
• Coordinate and oversee the creation of complex SQL queries for custom reporting, system integration, data migration and automated database functions.
• Coordinate and oversee the importation and extraction of data from multiple sources into SQL tables for data comparisons and reporting purposes; create and maintain reports in SQL reporting services.
• Coordinate and oversee the development and deployment of Microsoft Reporting Services Reports (SSRS); provide technical support for SSRS business applications; assist with testing and quality assurance activities with data extracts, research, and analysis.
• Support client-access portals, working with Technology Support in assigning access codes and granting access to data; regularly review and ensure accuracy of client data; assist in training new portal users.
• Assist with the development and maintenance of operational manuals and training materials related to all IP technology processes, procedures, service lines and metadata in clear and concise language; assist with training programs for staff and timekeepers in order to further departmental goals related to IP technology.
• Proactively communicate with internal and external clients to ensure service needs are met.

MINIMUM QUALIFICATIONS

Knowledge/Skills/Abilities:

• Familiarity with patent and trademark terminology.
• Ability to effectively supervise, mentor and train in a group of ten or more.
• Strong sense of accountability, taking ownership over projects and responsibilities and resolving issues proactively.
• Ability to work as a team player as well as independently and meet deadlines, including demonstrated ability to work on multiple projects with often competing client enforced deadlines.
• Ability to accurately interpret a variety of instructions furnished in written or oral form; to synthesize complex and diverse information.
• Meticulous attention to detail, accuracy, and thoroughness.
• Ability to write clearly and informatively; edit work for spelling and grammar; varies writing style to meet needs, able to read and interpret written information in English required.
• Ability to communicate effectively with all levels of management, staff and timekeepers is essential.
• Advanced proficiency in Internet, Word, Outlook, and Excel; some knowledge of FileSurf, Worksite, and Kronos preferred.
• Proficiency in PATRICIA docketing databases or other similar docketing software package.

Education:

• Bachelor’s degree required. Related work experience may be considered in lieu of degree.

Experience:

• Minimum ten (10) years’ experience in a supervisory patent prosecution role with a broad understanding of patent policies and procedures required.
• Minimum of two (2) years hands-on experience supporting IP technology infrastructure.

ABOUT ARENTFOX SCHIFF:

ArentFox Schiff LLP is internationally recognized in core industries where business and the law intersect. With more than 600 lawyers and policy professionals, the firm serves as a destination for an international roster of corporations, governments, private individuals, and trade associations.

The annualized good faith base salary range for this position in the following location(s):

• Washington, DC and Los Angeles, CA; is a minimum of $129,625 to a maximum of $194,438 per year.
• New York, NY and San Francisco, CA: is a minimum of $142,588 to a maximum of $213,882 per year.

The actual salary rate offered to candidates within that range will depend on a variety of factors, including without limitation, years of relevant experience, education, applicable certifications, and other relevant professional licenses held, and the candidate’s overall qualifications for the position as assessed by the Firm.

ArentFox Schiff is committed to equal employment opportunity and diversity in the workplace. We maintain a policy of considering all qualified applicants for employment without regard to race, color, religion or creed, sex, gender, sexual orientation, gender identity or expression, age, citizenship status, order of protection status, national origin, ancestry, medical condition, genetic information, marital status, physical or mental disability, parental status, source of income, military or veteran status, unfavorable discharge from military service, or any other basis protected by federal, state or local law. We will consider qualified applicants with criminal histories in a manner consistent with the San Francisco Fair Chance Ordinance.

* A job description is a general description of the function and major duties of a job. It may not specify all duties, tasks, and assignments associated with a job. It is not intended to limit or in any way modify the right of management to direct, assign, and control the work of employees in a unit. Accuracy, attention to detail, ability to work effectively in a team environment, and ability to work in an atmosphere of multiple projects and shifting priorities are requirements of all jobs at ArentFox Schiff LLP. Additional job related qualifications may be specified for some openings. Job descriptions are subject to periodic review.

WORKING CONDITIONS

The following table indicates the degree of working conditions expected for the job. Reasonable accommodations may be made to enable individuals with disabilities to meet these requirements.

N/A = 0-10%, Occasionally = 11-33%, Frequently = 34 - 66%, Constantly = 67 - 100%

Requirement - Frequency

Travel - Occasionally

Sitting - Constantly

Standing - Occasionally

Walking - Frequently

Reading - Constantly

Typing - Frequently

Concentration - Frequently

Oral and Written Communication - Frequently

Horizontal Reaching - N/A

Vertical Reaching - N/A

Twisting - Occasionally

Repetitive Arm/Hand/Finger Movements - Frequently

Weight - Occasionally, up to 15 lbs.