What are the responsibilities and job description for the IP Specialist position at Direct Counsel?
An Amlaw 100 firm has an opening for an IP Specialist located in their Denver office. This role could be considered for a hybrid work schedule and is available in Denver, Chicago, Kansas City, Phoenix, and Clayton, MO.
The skills and responsibilities required for the position is as follows:
- Draft shell amendments for Attorney use to respond to domestic and foreign actions.
- Tracking and managing IP dockets and deadline via CPi.
- Able to distribute and track work that is assigned to paralegals and other associates.
- Exceptional typing skills; ability to draft and/or edit documents accurately and efficiently.
- Open and maintain new patent matters to include complete prosecution history. The matters should include: applications as filed, responses to actions as filed, notices issued by the PTO, correspondence with client and/or foreign agents, etc.
- Responsible for generating and filing Information Disclosure Statements (IDSs). Need strong research skills in order to obtain necessary non-patent literature documents and foreign publications for submission with the IDSs.
- Review issued patents and registered trademarks for errors, determine expiration date of patents and trademarks, and prepare certificate of correction, if necessary.
- Responsible for drafting reporting letters for attorney review and circulating to clients after approval.
- Able to effectively communicate with their assigned attorneys, set priorities, meet deadlines and manage multiple patent-related projects.
- calendaring, scheduling meeting, file openings, etc
- Annually complete eight hours of continued technical education through the training department
- Responsible for scheduling and coordinating travel arrangements (Attorney travel)
- Responsible for overseeing invoice payments/expenses/reimbursements (Chrome River)
- Responsible for preparing engagement letters
- Coordinate tracking of CLE for attorneys
Experience and qualifications:
- 5 years of related experience
- Ability and willingness to participate as part of a devoted team of patent specialists, paralegals, docketers and attorneys.
- Comprehensive knowledge of both domestic and foreign intellectual property processes and policies (specifically: utility patents, design patents, and trademarks).
- Comprehensive knowledge of the different types of IP databases (ePCT, USPTO, Espacenet, WIPO, etc).
- Strong communication skills. Will communicate with clients and foreign agents regularly.
- Ability to generate and manage client portfolios.
- Excellent attention to detail
- Proficient in, inTapp, Document Management system, and Microsoft programs (Word, Visio, Excel and Outlook) or is a fast learner.
#LI-Hybrid #LI-MM1
- The budgeted salary range for this position is $90,000 - $115,000
- Comprehensive benefits including medical, dental, vision and PTO
Salary : $90,000 - $115,000
