Patent Practice Coordinator

 

GENERAL SUMMARY

The Patent Prosecution Practice Coordinator is the administrator who performs administrative tasks to support primarily the Patent Prosecution Group, as well as other minor tasks to support other groups.  This includes support and coordination of US and non-US patent application filing and prosecution, as well as related practice before the U.S. Patent and Trademark Office (PTO).  This includes keeping track of and promulgating new, modified or existing policies and procedures, both internal and external.  The Patent Prosecution Practice Coordinator will understand and have proficiency in computer-related systems and services in support of the Patent Prosecution Group.

 

GENERAL RESPONSIBILITIES

  • Oversee all support operations for the Patent Prosecution Group, including providing support for use of firm software/systems and acting as liaison to the IT Department.

  • Assist Patent Prosecution Committee in the development of and management of firm policies and procedures.

  • Update and manage patent prosecution manual.

  • Coordinate workload among Patent Prosecution support staff; coordinate meetings to discuss pertinent issues, keeping staff informed and updated.

  • Provide back-up support in all areas relating to the Patent Prosecution Group (for example, but not limited to, foreign intake, foreign filing, and docketing).

  • Stay up-to-date on patent-related PTO news and changes; and research implications of same.

  • Apply any PTO changes and/or make adjustments to patent practice based on new rules/changes, and communicate same to firm.

  • Schedule, prepare documents and agenda, and participate in Patent Prosecution Committee meetings and firmwide Patent Prosecution Group meetings, and collaborate with Patent Prosecution Committee to develop and implement Patent Prosecution policies and procedures.

  • Manage attorney registrations, account access (e.g., but not limited to, PTO accounts), databases/systems, and train new staff on relevant systems.

  • Assist with new hire orientations and staff departures.

  • Coordinate transferring in and out of files, including those associated with attorneys joining or leaving the firm; ensure that attorneys are kept up-to-date.

  • Coordinate implementation of document retention policies.

  • Research software/services and contract options as they relate to patent prosecution practice.

 

SKILL REQUIREMENTS

  • Proficiency in Microsoft Office Suite.

  • Proficiency in IPDAS or similar document assembly system software.

  • Proficiency in PTO systems, including EFS, EPAS and PAIR.

  • Proficiency in use of legal research systems (e.g., LEXIS)

  • Working knowledge of docketing systems, especially CPi.

  • Ability to constructively communicate (both in writing and orally) and work with others, including good interpersonal skills.

  • Ability to assist support staff with issues relating to use of Microsoft Office Suite, IPDAS, PTO systems, and other software systems.

  • Attention to detail and high degree of accuracy in work.

  • Ability to be proactive and to identify and address problems quickly.

  • Ability to prioritize and resolve conflicting workload assignments, to adapt to changing conditions, and to work in a fast-paced environment.

 

EDUCATION AND EXPERIENCE REQUIREMENTS

  • HS Diploma required; Associates degree preferred

  • Paralegal certificate preferred

  • At least ten years experience working in IP law firms in a variety of patent prosecution support roles (e.g., legal secretary, paralegal, foreign filing, formalities, docketing, etc.)

  • Superior knowledge of patent rules/regulations and procedures for both US and non-US patent prosecution

  • Demonstrated ability to understand and work with complex intellectual property software systems, including docketing systems, document assembly systems, etc.

  • Legal support staff management experience desirable, but not required

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