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IP Rights Management Specialist

2 months ago

Hartford, Connecticut, United States Coda Search│Staffing Full time

Position Overview

Coda Search│Staffing is seeking a meticulous and driven Intellectual Property Rights Management Specialist who is enthusiastic about acquiring practical legal experience within a forward-thinking organization. This role offers the chance to engage with a diverse range of intellectual property matters while collaborating closely with skilled attorneys focused on trademark and patent prosecution as well as portfolio oversight.

In this position, you will primarily work autonomously to draft communications and liaise with clients regarding imminent deadlines. You will also prepare and submit electronic filings to the United States Patent & Trademark Office (USPTO) and coordinate with international law firms to manage trademark and patent submissions in various jurisdictions. Your business insight, strong work ethic, and exceptional communication abilities will be vital in fostering client relationships and collaboratively addressing challenges.

Key Responsibilities:

  • Monitoring client dockets for approaching deadlines, drafting client notifications regarding these deadlines and their requirements, and providing follow-up as necessary;
  • Preparing electronic documentation for trademark submissions to the USPTO, including applications, responses to office actions, extensions, statements of use, declarations of use and incontestability, renewal applications, and specimens of trademark use;
  • Preparing electronic documentation for trademark submissions to the World Intellectual Property Organization (WIPO), including international registration applications and other various WIPO filings;
  • Liaising with foreign law firms to offer instructions for filing and prosecuting international trademark applications and addressing their requests for powers of attorney and other necessary filing information;
  • Assisting in trademark clearance investigations, including conducting searches in the USPTO and Saegis databases;
  • Preparing electronic documentation for patent submissions to the USPTO, including provisional and utility patent applications, information disclosure statements, and responses to office actions;
  • Drafting formal documents for patent submissions to the USPTO, including declarations, powers of attorney, assignments, and other formal documents as required by international patent offices;
  • Organizing and maintaining electronic patent and trademark files.

Qualifications:

Preferred:

  • Capability to manage multiple projects independently, adhere to deadlines, and function effectively as part of a client-focused team;
  • Strong attention to detail, excellent communication skills (both written and verbal), and superior organizational and interpersonal abilities.

Requirements:

  • Proficiency in preparing and electronically filing trademark and patent documents with the USPTO;
  • 2-3 years of experience in intellectual property, including familiarity with an IP practice management system in a law firm or corporate legal department;
  • Experience in monitoring patent and trademark dockets;

Proficiency in Microsoft Office applications (e.g., Word and Excel) and billing software is essential.