IP Project Specialist
Baker Botts

Job Info

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Baker Botts L.L.P., a full-service, leading international law firm recognized for our understanding of the industries we serve, is seeking a seeking a highly motivated IP Project Specialist to provide support to the IP department with client work according to established policies and procedures. This is a full time, non-exempt position resident in our New York Office with excellent benefits.

Essential Duties and Responsibilities

• Review and docket all incoming U.S. correspondence from the Patent and Trademark office.
• Update CPI when new rules come into effect for U.S. applications.
• Create file records in CPI, calculating and recording all deadlines for U.S. applications.
• Update CPI for abandoned files, transferred out files, transferred in files, and changes of attorneys on files for U.S. records.
• Communicate all relevant dates (both written and verbal) to attorneys - docket reports are printed to attorneys monthly and daily docket deadlines are communicated verbally.
• Ensure dockets are closed on a daily basis in collaboration with the other project specialists and adhering to the appropriate attorney approval protocol.
• Assists with IP filings with the USPTO and associated tasks.
• Assists with and generates documents for filing with USPTO and other governmental agencies.
• Generates IDS’
• Other tasks as may be required relating to patent and other IP filings.
• Prepare and maintain specific custom client case list.
• Read all incoming U.S. faxes and docket relevant dates relating to files.
• Maintain and monitor all incoming U.S. mail that hasn’t been matched up to the file and ecopy the outstanding mail to the attorney working on the file within a week of receipt. (Mail waiting for files needs to be reviewed daily, so that deadlines are not missed)
• Forward all notices of missing parts to U.S. Patents Legal Assistant for client reporting and preparation of requested missing documents or reminder letter if documents were already sent to the client.
• Proof reading and client reporting of the U.S. filing receipt. (Forward copy of letter to U.S. Patents Legal Assistant so that he can prepare and forward to client Power/Declaration and Assignment in anticipation of responding to missing parts).
• Proof reading and client reporting of the assignment recordal.
• Review and client reporting of the Notice of Publication.
• Verify all cited references were received with office actions and if applicable, forward reference sheet to foreign paralegal.
• Preparation of letter to client reporting the deadline for issue and publication fees. (Forward a copy of the letter to U.S. Patents Legal Assistant so that he can verify that all fees are paid by deadline).
• Preparation of letter to client reporting the Issue Notification.
• Preparation of letter to client reporting the Letters Patent.
• Other tasks and projects as assigned.

Qualifications

• Thorough knowledge of patent docketing procedures.
• Minimum bachelor’s degree or relevant work experience.
• Minimum four (4) years of work experience in a law firm environment, or related professional experience.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Ability to proofread material for contextual, grammatical, typographical or spelling errors.
• Interpersonal skills necessary in order to communicate in person, by e-mail and telephone and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with ordinary courtesy and tact.
• Knowledge and experience with the USPTO website.
• Knowledge of and experience with electronic filings with USPTO.
• Strong attention to detail.

Extent of Contact (Within and outside the Firm)

• Extensive daily contacts with lawyers, staff, and clients.

Physical Demands

• Moderate physical activity and must be able to work at a computer for considerable periods of time.
• Ability to operate standard office equipment such as computer, photocopiers, fax machines, and typewriter.
• Must be able to lift, squat, kneel and bend.

Working Condition and Environment

• Work is normally performed in a typical interior/office work environment.
• This position is a full-time position requiring a 5-day work week and standard hours as outlined in the firm policy manual. Work occasionally requires more than 35 hours per week to perform the essential duties of the position and may require irregular hours.
• Must be available to work overtime, including weekend hours, when necessary to meet established deadlines or stay current with occasional peaks in workload. Must be willing to change regular work schedule to meet the needs of the Firm.
• Work occasionally requires a high level of mental effort and strain while organizing and maintaining multiple files.
• Must be able to perform essential duties of the position with time constraints and frequent interruptions.
• This role may be hybrid and will require a minimum of three days per week (or at least 60%) present in the office, and up to two days per week (40%) may be performed remotely.

For positions based in the NYC office of Baker Botts L.L.P., the salary range is $44.00 - $66.00 per hour.

Baker Botts L.L.P. is an equal opportunity employer and considers all qualified applicants for employment without regard to race, color, gender, sex, age, religion, creed, national origin, citizenship, marital status, sexual orientation, disability, medical condition, military and veteran status, gender identity or expression, genetic information or any other basis protected by federal, state, or local law.

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