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A reptuable national law firm is adding an IP Assistant to their Boston office.
MUST have 3+ years’ patent prosecution assistant experience.
Job Description: Under limited direction, guided by department objectives and priorities, the IP Secretary must perform a variety of secretarial tasks to support assigned patent and /or trademark attorneys and other timekeepers. A key component of this position is to provide a high level of internal and external client service and support, while producing a high volume of consistently excellent work product. In addition, an IP Secretary must maintain a general knowledge of the Firm’s patent and/or trademark practice area and a specialized knowledge of the assigned timekeepers’ practice area(s) and clients.
Billing/Expenses: Firm financing and effective operations are heavily dependent upon the IP Secretary’s efforts to ensure that client bills are accurately produced on a monthly basis. It is also important to obtain prompt reimbursement for a timekeeper’s business-related expenses. This includes, but is not limited to, such duties as:
- Prepare, edit, proofread and/or close daily time entries as directed by assignments; may help create draft time entries from calendars and notes.
- Under general direction from partner and accounting personnel, edit, proof and complete complex clerical procedures relating to billing for clients; may assist in collection efforts.
- Prepare expense reimbursement documentation for assigned attorneys/agents for submission to Accounting as appropriate.
- Review foreign associate bills for services rendered and forwards to the timekeeper for approval. From time-to-time will assist with reviewing and reconciling statements from foreign associates.
Administrative Duties: IP Secretaries are responsible for ensuring the smooth and efficient operation of their timekeepers daily schedule. This includes, but is not limited to, such duties as:
- Calendar due dates, speaking engagements, meetings and deadlines
- Make appointments and schedule interviews.
- Create and maintain files including, but not limited to, saving emails and other electronic files.
- Screen and route telephone calls.
- Receive and direct clients and visitors.
- Coordinate travel arrangements with travel agency and firm’s Travel Coordinator.
- Handle routine client/non-client inquiries with little or no guidance.
- Perform research as directed.
- Coordinate resources to ensure multiple and complex tasks/activities are completed as required.
- Provide guidance (i.e., mentoring) for new employees.
- Provide overflow assistance as needed.
Document Preparation: In order to provide clients with legal services of the highest quality, it is essential that IP Secretaries produce accurate, error-free and properly-formatted documents. This includes, but is not limited to, such duties as:
- Prepare a variety of correspondence, reports, memoranda, and legal documents required by the timekeepers to whom assigned from handwritten notes, transcribing equipment, drafts or oral instructions.
- Proofread, photocopy, assemble, and distribute prepared materials as necessary.
- Keyboard, scan and revise a variety of documents.
- Coordinate lengthy document production with Resource Center personnel
Client Service: In order to maintain good client relationships, it is important for IP Secretaries to provide relevant and timely information to clients and timekeepers (including times when they are out of the office) in a professional, courteous and effective manner. This includes, but is not limited to, such duties as:
- Ensure exemplary client service to all internal and external clients; proactively promote client service throughout department and among teams; respond to peer requests with recognition that the request serves a client or Firm need.
- Proactively communicate with internal and external clients to ensure that administrative customer service needs are met.
- Regularly review client service procedures and standards in relation to job position and implement improvements and enhancements to client service.
Document Management: The quick retrieval of information is a key aspect to providing high-quality legal services. As such, it is important for IP Secretaries to maintain current and orderly electronic and paper files according to Firm guidelines. This includes electronic files in iManage, Outlook and FileTrail. Duties include but are not limited to:
- File maintenance
- Preparing requests to open new U.S. or foreign matters,
- Filing official documents and correspondence,
IP Secretary Core Duties:
- Submits Conflict Checks
- Prepares Engagement Letters
- Requests new client matter numbers
- Matter specific research / search at USPTO at attorney’s request
- Monitor and answer any assigned docket items by the close of business each day
- Invoice processing
Patent Prosecution
- Prepare & send PFS results to Client
- Send attorney filing recommendations to client
- Send first draft of application to inventors / client, including inventor confirmation
- Prepare/ analysis shells (US / foreign)
- Forward draft response to client (US / foreign)
- File responses (US)
- Petition to Expunge Pre-Allowance
- Status Checks & Inquiries
- Terminal Disclaimer(s)
- Petition to Revive – OA response
- RCE with decision to withdraw from petition
- Request for Continuing Examination (depending upon stage of prosecution )
- Petition to Withdraw (as Counsel)
- Miscellaneous PTO Communications and tasks not covered under the Patent Prosecution Department (PPD) job description (PPD Coordinator assigns to appropriate secretary)
- Estimates
Reporting/Communications
- Restriction Requirements
- Advisory Actions
- Applicant / Examiner-initiated Interview Summary
- Decisions on Petition
- Interview Summaries (not received with OA/NOA)
- Notice of Non-Compliant Amendment
- Ex-Parte Quayle
- Notice of Abandonment
Trademark
- Prepare weekly attorney docket reports
- Gathering evidence from iManage (Certificates of Registration) at attorney’s request
- Client Spreadsheets (Reports)
- Assisting with Client invoicing
- Client Collections (in coordination with and at the direction of the Accounting Department)
- Proofreading /Quality Review of primary duties
OTHER DUTIES AND RESPONSIBILITIES
- Internal / Client requested tracking spreadsheets
- Other duties as assigned and approved by management
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