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Intellectual Property Clerk

Posted: January 24, 2019

This position is open to our Chicago or New York office.

The Intellectual Property docket clerk will be supervised by the Managing Attorney/National Docket Counsel. They will be part of a national team of Intellectual Property docket clerks who work across all domestic offices. They will primarily be responsible for supporting Intellectual Property attorneys throughout the firm. They will perform a variety of trademark and patent docketing duties, which includes handling requests from attorneys, paralegals and secretaries. This position requires a strong attention to detail and strong organizational skills with a customer service focus on meeting the client team needs.

Job Description

Responsibilities of the Intellectual Property docket clerk include, but are not limited to:

  • Review and calendar all intellectual property correspondence upon receipt in accordance with firm policies
  • Enter new matters and applications in the Intellectual Property docketing software
  • Monitor the Trademark/Copyright Group’s centralized Docket email folder for receipt of docketing requests and U.S. Patent and Trademark Office correspondence
  • Responsible for quality control, daily maintenance and operations of the firm’s docketing system
  • Manage the filing process with the U.S. Patent and Trademark Office
  • Generate docket reports as directed
  • Follow-up with attorneys and staff on deadlines to ensure compliance
  • Respond to attorney and client inquires relating to patent and trademark filings
  • Work with the records and conflicts teams to ensure risk policy compliance
  • Download and process U.S. Patent and Trademark Office correspondence from government websites
  • Process correspondence from international agents
  • Removal of completed items verified through Trademark Status & Document Retrieval (“TSDR”) and enter missing or updated information through PAIR and TSDR
  • Monitor client closures and perform docket system clean-up of related entries as appropriate
  • Process incoming lateral attorney client files, including placement of the file into standard trademark format and uploading and entering the dates into the firm’s docketing system
  • Assist with the client intake process
  • Conduct periodic status checks and participate in docket audits using government websites and communication to international agents
  • Maintain current knowledge of relevant and applicable Intellectual Property law, rules and procedures
  • Maintain knowledge of intellectual property processes and procedures for both patent and trademark

Qualifications

  • Bachelor’s degree or equivalent work experience
  • Prior Intellectual Property docket clerk experience required (minimum 5 years)
  • Familiarity with U.S. Patent and Trademark Office rules and the trademark lifecycle

Knowledge and Skills

  • Experience with CPI or equivalent rules-based intellectual property docketing software
  • Must have extensive knowledge of U.S. and foreign patents, PAIR, Trademarks and PCT
  • Computer proficient with familiarity of various database systems, including: Outlook, MS Word, and other third party internal firm databases
  • Must be detail oriented and have the ability to budget time efficiently while handling multiple tasks
  • Must be a self-starter and able to work with a diverse team in a fast-paced environment
  • Must accept direction and constructive feedback
  • Must be able to exercise independent judgment in performing all aspects of the position
  • Ability to frequently work at a fast pace with unscheduled interruptions

For more information or to apply visit:
https://www.seyfarth.com/Staff


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