IP Legal Secretary
1001 Pennsylvania Ave NW Washington, D.C. US
The IP Legal Secretary provides highly specialized patent prosecution support to the Intellectual Property attorneys and assists with other administrative duties as assigned by the practice group or firm leadership.
- Successfully completes a heavy docket of filing and administrative deadlines, including handling last minute filings and requests from clients, attorneys, or firm administration.
- Actively participates in risk management related to detailed independent docketing of due dates and client or attorney requested by dates, careful review of client instructions, accurate preparation of documents, file maintenance/handling procedures, timeliness/responsiveness, and overall quality of service.
- Strictly adheres to established policies and procedures to meet expectations of firm administration, clients, and attorneys; identifies and applies special client instructions and attorney preferences related to workflows, document preparation, and billing.
- Prepares U.S. Patent and Trademark Office (“USPTO”) documents in “signature ready order” and files electronically or in hard copy, beginning with the new application through to the issue of the patent and related to utility, design, and plant applications, including U.S. national phase, non-provisional, provisional, divisional, continuation, continuation-in-part, reexamination, and reissued applications.
- Prepares on-demand and monthly client debit notes in “client ready order”.
- Researches and resolves client billing inquiries and PTO deposit account or credit card charges and refunds. Assists with implementation of alternate fee arrangements and determination of special client billing procedures.
- Maintains up-to-date knowledge of the Rules of Practice in relation to Intellectual Property both domestically and internationally.
- Prepares client, agent, and vendor correspondence in “signature ready order” and corresponds directly with clients under attorney guidance.
- Receives and screens telephone calls in a manner consistent with office policy and attorney preference.
- Opens, sorts and distributes mail in compliance with office policy and procedure and in accordance with attorney preference.
- Coordinates the scheduling of conferences, meetings, appointments and preparation of materials.
- Coordinates maintenance of calendar meetings and upcoming events.
- Coordinates business trips including the making of travel arrangements by securing air, hotel and car reservations.
- Provides overall proactive, professional and detailed service to both internal and external contacts.
Knowledge, Skills and Abilities
- Ability to prepare accurate documents that meet USPTO filing requirements related to all areas of patent prosecution from filing the application to payment of the issue fee.
- Ability to independently identify docketing dates based on USPTO correspondence, client instructions, and other documents supplied by the client or foreign agents.
- Efficient, accurate and skilled use of USPTO and other patent and trademark resources including PAIR, EPAS, EFS-Web, Advanced Patent/Assignment Database Searching WIPO, ESPACENET, Foreign Country Patent and Trademark Office websites (e.g. JPO), etc.
- Ability to independently evaluate documents received and determine appropriate actions required to meet client expectations and legal requirements.
- Advanced PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software. Intermediate knowledge of MS Excel, PowerPoint, computerized docketing and billing systems. Strong knowledge related to use of equipment including scanners, copiers, facsimile machines.
- Must pay extreme attention to detail.
- Ability to accurately type 80 words per minute.
- Must possess a thorough command of the English language, including excellent spelling, grammar and punctuation.
- Expert knowledge of document forms and styles.
- Ability to build and maintain positive relationships internally and externally.
- Demonstrated ability to work effectively with others in a cooperative, enthusiastic and friendly manner to accomplish position functions and participate in team efforts.
- Ability to adapt to changing priorities and maintain a productive and committed work effort, meeting deadlines and managing workload.
- Ability to work overtime hours as requested.
- Ability to retrieve and distribute files, written documents or office supplies weighing up to 12 pounds and ability to retrieve and replace objects from shelves up to 6 feet high.
The position requires a High School Diploma or GED. Bachelor’s Degree and/or specialized training preferred.
The position requires a minimum of five (5) years of increasing responsible, directly related patent prosecution experience during which the knowledge, skills and abilities applicable to the position were demonstrated. Some IP litigation and/or trademark experience helpful.