IP Specialist

Responsibilities:

• Reviewing client dockets for upcoming deadlines, preparing correspondence to clients notifying them of deadlines and the requirements therefor, and following up with them as needed;

• Preparing electronic forms for trademark filings in the USPTO, including trademark applications, responses to office actions, extensions, statements of use, declarations of use and incontestability, applications for renewal, and specimens of trademark use;
• Preparing electronic forms for trademark filings in the World Intellectual Property Office (WIPO), including international applications for registrations and other miscellaneous WIPO filings;
• Communicating with foreign law firms to provide instructions for filing and prosecuting foreign trademark applications and to address their requests for powers of attorneys and other filing information;
• Assisting in trademark clearance searches, including conducting searches in the USPTO and Saegis databases;
• Preparing electronic forms for patent filings in the USPTO, including provisional and utility patent applications, information disclosure statements, and responses to office actions;
• Preparing formal documents for patent filings in the USPTO, including declarations, powers of attorney, assignments, and other formal documents as required by foreign patent offices

Requirements

• 2+ years of intellectual property experience, including using an IP practice management system in a law firm.
• Experience with monitoring patent and trademark dockets.
• Proficiency with Microsoft Office (e.g. Word and Excel) and billing software(s).