Patent Docketing Specialist I (Entry Level)
July 20, 2022
A Patent Docketing Specialist I must possess a basic knowledge of U.S. and foreign patent docketing rules and regulations and have the ability to develop more advanced understanding and effectively apply knowledge with respect to his/her role. He/she must have the ability to use resources to locate and verify basic factual information and must be able to apply that knowledge across a broad range of tasks and quickly identify information and related response deadlines. Responsibilities include, but are not limited to: creating and maintaining patent prosecution files, maintaining databases, entering deadlines and other case-specific data into the docketing system, interpreting documents and identifying deadlines, preparing weekly and periodic reports, following-up on deadlines, monitoring USPTO Public PAIR and PTAB. The Patent Docketing Specialist I must be available to work overtime when required to meet the demands of this position. In addition, responsibilities include general office administrative functions as necessary.
- Review and triage all patent correspondence received, index and catalog the correspondence for further processing by the docketing team and/or upload to FTF. Ensure that all deadline related correspondence is processed with priority.
- Ensure that the CPi and First-to-File matter specific records are complete and correct. Process all requests from attorneys for internal reminders and case-specific changes to be made to the client portfolio.
- Review the entire prosecution file and identify upcoming deadlines and deficiencies requiring correction for all applications and issued cases received through New Business Intake. Enter applications and identify deadlines and other case-specific data into the docketing system.
- Review and enter new applications, respective deadlines and other case-specific data into the docketing system for all applications filed or retained by Foley Hoag LLP.
- Review CPi Reports, and research any discrepancies found. Generate daily report of all hard deadlines due that day, and all foreign deadlines due the following day in light of time differences; follow-up as needed.
- Monitor USPTO public PAIR for newly issued correspondence for transferred in files
- Review USPTO PTAB for newly issued IPR/PGR documents
- Assist with the preparation, review and central clearance of the Finals deadline report.
- Assist with the advancing of deadlines on the docket to ensure these deadlines remain on active docket reports.
- Provide back-up coverage for various docketing functions as needed.
- At least 1 year of related work experience
- Ability to learn and retain laws, articles, regulations, and guidelines in the U.S. as well as in foreign countries in order to interpret correspondence received and to identify and anticipate potential problems that may occur. Knowledge of current changes in laws and rules that periodically occur in the various countries and ability to apply them correctly to existing applications as well as filings made after a change has occurred.
- Ability to learn and retain working knowledge of CPI and First to File
- Ability to learn and retain working knowledge of USPTO public and private PAIR
- Professional manner
- Attention to detail
- 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’s Degree, or equivalent experience