Senior Patent Docketing Specialist
March 12, 2021
A Senior Patent Docketing Specialist must have an advanced understanding of the U.S., International, and various foreign Patent Office rules, procedures, and guidelines. He/She must be able to apply that knowledge across a broad range of tasks and quickly identify critical 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 and supporting the learning of more junior docket specialists. The Senior Patent Docketing Specialist 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. 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.
- 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, including pre-filing quality control of U.S. and PCT filings
- Support the continued learning of more junior members of the docketing team.
- Share expertise with others to improve the efficiency and effectiveness of the docketing team.
- At least 12 years of related work experience
- Advanced understanding of the laws, articles, regulations, and guidelines in the U.S. as well as in various 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.
- Working knowledge of CPI, IPDAS and Access
- Knowledge of First-to-File a plus
- 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 Degree, or equivalent experience