IP Prosecution Docketing Specialist - Trademark

Location: New York, NY
Date Posted: 08-06-2018
KJM Staffing Solutions is currently seeking an experienced Patent Docketing Specialist for our large law firm client.  This role will support the IP practice and will be based in the New York office of this global law firm.  This role offers a high base salary and excellent benefits, growth potential.
The Docketing Specialist is responsible for accurate review, entering, processing and tracking of critical dates for all IP-related prosecution matters (patent, trademark, copyright, and domain names worldwide) received from the USPTO and foreign associates.  Responsibilities include maintaining the docket system, Computer Packages, Inc. (“CPi”).  The Docketing Specialist must have prior IP Prosecution docketing experience of at least 5 years and demonstrate high attention to detail, excellent execution and communication skills, and planning skills.  The person must be capable of organizing his/her workload, exercise independent judgment and discretion while working autonomously (seeking counsel when appropriate) and work under pressure often with competing priorities.  Accurate and timely completion of responsibilities and tasks to ensure strict deadlines are adhered to and met is essential.

Duties & Responsibilities:
  • Responsible for entering and tracking critical dates with respect to Patent, Trademark prosecution while discerning the appropriate information to enter into the docket in a timely and accurate manner; interpreting official documents and correspondence to gather necessary information for entry into CPi.
  • Processes and interprets incoming correspondence from the USPTO, attorneys, clients and foreign associates for entering into the docket database.  Prepares timely and accurate reports, searching for and retrieving filing information from websites if/when needed to maintain the integrity of the CPi database.
  • Responsible for accurate review and second checking of co-workers work, processing and docketing all documents received from the USPTO and foreign associates, as well as maintenance of IP records and related docket entries in CPi.
  • Promptly emails relevant communications to the attorneys especially when mail is addressed to only the docketing department. 
  • Regularly performs significant and recurring tasks with a high degree of priority, attention to detail and maintains follow-up on diverse activities in a timely, deadline-driven environment.  Exercises good judgment in application of policies and practices in handling all prosecution matters handled by the Docketing Department.
  • Perform additional duties as requested by the Docket Manager and Department Manager.
Education & Experience:
  • Bachelor’s Degree required.
  • Minimum 3- 5 years of law firm experience, preferably in patent prosecution.  Prior experience and knowledge of IP areas of legal practice concentrating in Patent prosecution.
  • Solid working knowledge of Windows 7, Microsoft Office 2010 and Outlook, as well as CPi, searching skills using PAIR and foreign websites.
  • Prior experience and knowledge of IP areas of legal practice concentrating in Patent prosecution;
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