Patent Docketing Specialist
August 26, 2021
A Patent Docketing Specialist must have a solid understanding of the United States, International, and various foreign Patent Office rules, procedures, and guidelines. He/she must be able to apply this information correctly when reviewing PTO submissions to ensure we are meeting the requirements set in the respective communications. The integrity of the information maintained in the system is vital to ensuring the legal staff meet critical deadlines. Responsibilities include, but are not limited to: creating and maintaining patent prosecution files, maintaining database, entering deadlines and other case-specific data into docketing system, interpreting documents and identifying deadlines, preparing weekly and periodic reports, and following-up on deadlines. The specialist must be available to work overtime when required to meet the demands of this position. In addition, any general office administrative functions as necessary.
- Review, catalogue and index all inbound patent mail, prioritize accordingly and launch related docketing and client reporting workflows.
- Review and process requests for system updates, including opening new matters. Ensure patent systems are current and complete. Ensure that the CPi and First-to-File matter specific records are complete and correct.
- Assist with the production and clearance of final deadline reports, follow up accordingly with legal and support staff.
- Provide assistance in pre-filing review of all U.S. and PCT daily filings.
- Review and process daily inbound PAIR mail and validate accordingly.
- Provide assistance on quality review of completed docketing tasks.
- Process all requests from attorneys for internal reminders and case-specific changes to be made to the client portfolio.
- Provide assistance on advancing deadlines to ensure docket reports are complete.
- Generate custom reports upon request.
- Complete data audit review when required.
- 5+ years of related work experience
- Full understanding of the laws, articles, and guidelines in the US as well as in various foreign countries in order to interpret the correspondence received and to identify and anticipate potential problems that may occur. Knowledge of current changes that periodically occur in the countries and ability to apply them correctly to existing applications as well as filing made after the change has occurred.
- Working knowledge of CPI and First-to-File a plus.
- Professional manner
- Attention to detail
- Ability to demonstrate discretion
- Must work well independently as well as a contributing member of a hardworking team
- Work effectively in time-sensitive situations
- Strong prioritization skills
- Sound judgment
- Strong work ethic
- Ability to multi-task
- Bachelor Degree or equivalent experience