Senior IP Analyst

1 day ago

Ann Arbor, Michigan, United States Clarivate Analytics US LLC Full time
About the Role

We are seeking a highly skilled Senior IP Analyst to join our team at Clarivate Analytics US LLC. In this role, you will be responsible for providing support to our clients by processing correspondences issued by the United States Patent & Trademark Office, patent offices worldwide, and the filing documents submitted during the Trademark life cycle.

Key Responsibilities
  • Assist counsels on prosecution of Trademark/Design applications/registrations before the local/international IPOs or responsible authorities directly or through the outside counsels
  • Convey and draft instructions to foreign counsel related to Trademark/Design matters; supervise outside counsel to assure deadlines are met
  • Maintenance of internal database; create portfolio status charts; create Trademark/Design portfolio reports
  • Create summaries and periodic status reports of Trademark/Design matters for clients; upgrade on procedures and modifications in applicable laws plus regulations in International IP offices; issue invoices and review outside counsel invoices for accuracy
  • Docketing: calendar the statutory & non-statutory deadlines in Intellectual Property Management System (IPMS) along with relevant documents to preserve IP rights
  • De-docketing: perform or close the calendared events in IPMS once the requisite action is completed or cancelled respectively
  • Prioritize daily docketing/de-docketing requests and other allocated tasks as agreed with client to complete in each day to keep IPMS current and correct
  • Review patent & trademarks prosecution related documents (US & Non-US) received via mail or shared site and update/create the records in IPMS as per the standard operating procedures (SOP)
  • Effective communication with Attorneys, Paralegals, Law firms, Foreign agents, and other stakeholders to seek instructions and clarification on certain tasks
  • Create and update patent & trademarks records in IPMS along with family linking of direct and subject matter related (SMR) applications
  • Maintain the data integrity of IPMS and proactively monitoring the docket to ensure that all PTO & client deadlines are met
  • Facilitate timely filing of all patent and trademarks application & office action response through order letters and other required instructions
  • Facilitate accurate and timely payment of all PTO fees including the maintenance fees, coordinate with client for payment instructions and coordinate with annuity service providers or law firms
  • Provide training to new joiners, conducting refresher trainings
  • Perform internal and PTO Audits as needed
About the Team

Come join our Filing & Prosecution Team at Clarivate Analytics US LLC. We are the global leader in Intellectual Property software and tech-enabled services, serving over 12,000 law firm and corporate customers every day. Our commitment is to give IP professionals the information, insight, and technology they need to manage the world's ideas.

Hours of Work
  • Full Time, permanent position
  • This is a hybrid role working 2-3 days a week in one of our US Clarivate offices

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