IP Docketing Specialist

Posted Yesterday
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4 Locations
In-Office
Junior
Professional Services
The Role
Manage incoming patent and trademark documents, calendar deadlines, create and maintain domestic and foreign IP records, prepare client reports, research prosecution issues, assist with annuities and database transfers, and support docketing process improvements.
Summary Generated by Built In
Job Summary & Responsibilities

Processes incoming patent documents and communications received from USPTO, foreign associates, clients, and other entities to handle all aspects of specialized daily docketing, including: calendaring dates, de-docketing database dates, creating and maintaining country and client "actions; creating new trademark and other IP related database records; sending reminders to attorneys, foreign associates, and clients; preparing docket reports; and assisting on other IP docketing tasks, as necessary.

Conducts research and extracts data necessary to manage foreign patent prosecution; generates docket reports to ensure no deadline is missed; prepares client reporting letters; and corresponds with foreign counsel, attorneys, and clients to obtain and provides direction regarding upcoming U.S. and foreign deadlines.

Creates new domestic and foreign patent and trademark application files including entry of case information and pertinent deadlines into firm and client databases.

Provides frequent feedback to develop solutions for docketing issues as well as to maintains and implements intellectual property department docketing processes, procedures, guidelines and practices.

Assists with transfer, conversion, and merge processes when transitioning client portfolios into the intellectual property docketing database.

Assists with payment of annuities and confirming the accuracy of annuities payments.

Works independently to recognize docketing anomalies and conducts appropriate research to resolve same.

Stays abreast of industry best practices, intellectual property docketing system(s) and technical considerations to present options to enhance the practice, increase efficiencies, and meet client needs.

Assists with ad hoc projects, as needed.

Preferred QualificationsAssociate's degree (A.A.) or equivalent from two-year college or technical school and at least two years of patent and trademark docketing experience and/or training; OR equivalent combination of education and experience. Other Skills: Working knowledge of US and Foreign patent and trademark procedures, deadlines, and patent and trademark prosecution rules. Working knowledge of Intellectual Property docketing software systems, PAIR and other international systems. Comprehensive knowledge of specific department and client guidelines, practices and procedures. Ability to complete assigned tasks in a timely manner with a high level of quality and attention to detail. Effectively set priorities, manage multiple projects and meet deadlines. Ability to collaborate and communicate in an effective manner with attorneys, clients and co-workers.

Skills Required

  • Associate's degree or equivalent and at least two years of patent and trademark docketing experience (or equivalent combination of education and experience).
  • Working knowledge of US and foreign patent and trademark procedures, deadlines, and prosecution rules.
  • Working knowledge of intellectual property docketing software systems and PAIR.
  • Comprehensive knowledge of department and client guidelines, practices and procedures.
  • Ability to complete assigned tasks timely with high quality and strong attention to detail.
  • Ability to set priorities, manage multiple projects, and meet deadlines.
  • Ability to collaborate and communicate effectively with attorneys, clients, and foreign counsel.
  • Experience with preparing docket reports, client reporting letters, and assisting with annuity payments.
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The Company
343 Employees
Year Founded: 1926

What We Do

Shook, Hardy & Bacon is a prominent trial and litigation firm serving health, science, and technology companies. The firm is known for its expertise in complex legal issues, including class actions, mass torts, and product liability. With a commitment to diversity, inclusion, and professional development, Shook provides comprehensive legal services and trial advocacy, helping clients navigate high-stakes legal challenges through a science-based approach to litigation.

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