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The Patent Coordinator Level II (PCII) is responsible for preparing all US documents in support of patent preparation and prosecution activities under the review and advisement of an attorney or partner. The PCII has a thorough understanding of all interrelations between P+S systems, software and IP-related issues. The PCII is responsible for supporting legal staff dockets and can interface with attorneys and partners on all administrative matters.
Responsibilities & Competencies:
- Prepares and files US patent applications and related prosecution documents with attorney review and guidance.
- Obtains inventor information; prepares and sends formal documents (Assignment, Declaration) for inventor signature, prepares for filing once received.
- Drafts Information Disclosure Statements (IDS) for attorney review. Uses references from assigned assisting parties and/or art from foreign associates and consults with partners, associates, patent agents and technical advisors who are stakeholders in a matter.
- Supports docket for assigned legal staff to ensure that every docket action is addressed within the specified timeframe.
- Dockets completed actions after responding or
- Completes New Business Intake (NBI) for new matters for existing
- Assists Associates, Patent Agents and Technical Advisors in the efficient use of administrative processes and systems.
- In certain situations, manages personal docket (under attorney review), enters billable time in timekeeping system as directed by Managing Partner and achieves billable hours targets if applicable.
- Performs patent, bibliography and family
- Performs other related duties as assigned.
Technical Competencies:
- Basic knowledge of Intellectual Property principles, terminology, patent lifecycle, timelines, process, USPTO practice, procedures & technology
- 1-3 years of increasing administrative responsibilities
- Familiar with MPEP – Manual of Patent Examining Procedure (MPEP)
- Familiarity with common IP software and systems, including:
- Microsoft Office Products
- IPManager
- iManage
- USPTO Portal, WIPO, EPO
- IPDAS
- ePCT
- Elite
- Client Portal(s)
- Excellent written and verbal communication skills
Behavioral Competencies:
- Proactive: Identifies and resolves potential problems before being asked or before the situation requires it, seeks information, knowledge and input from others.
- Managing Change: Demonstrates support for organizational changes needed to improve the firm’s effectiveness and gains support for implementation of ideas, projects and solutions.
- Personal Credibility: Acts with integrity to ensure one is perceived as responsible, reliable and trustworthy.
- Time Management: Manages time effectively and meets Punctual in meeting required working hours.
- Pursues Excellence: Demonstrates willingness to work hard, ask questions and take on challenges.
- Client/Customer Orientation: Recognizes and provides expected level of client service to internal customers and/or external Meets with clients/internal customers to determine their needs and effectively provides the services necessary to meet those needs.
- Fosters Teamwork/Cooperation: Effective in working with and assisting others. Treats co-workers, support staff and attorneys in a positive, professional manner. Encourages cooperation and collaboration within team and with other groups in the firm. Shows respect for others. Works effectively with all levels within the firm.
Education:
- Bachelor’s Degree in Business Administration or related field, or IP Paralegal Certification
- Related experience may be substituted for a degree
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