IP File Transfer Coordinator

Summary

Under direct supervision, and according to established policies and procedures, the IP Assistant & File Transfer Coordinator’s primary objective will be facilitating, coordinating and supporting the necessary intra-departmental activities required for timely and efficient intake of new IP files transferred to the firm in connection with (1) lateral IP attorney intake and (2) IP portfolio transfers from other law firms for existing IP attorneys.

The IP Assistant & File Transfer Coordinator will also be responsible for providing overflow and backup support for other IP Assistants in the IP Department, as needed. The IP Assistant performs a variety of docketing, file maintenance, document and correspondence preparation, and other related duties.

Key Responsibilities

A qualified candidate should either have or be able to quickly acquire a working

understanding of the Firm activities associated with intake, opening and docketing of large

IP portfolios (e.g., between 100 and 5000 discrete matters). The candidate will be

Expected To Acquire a Working Understanding Of

• The firm’s docket database (CPi) and how industry docketing software data feeds into that database;
• Firm procedures for electronic file transfer from other law firms or clients;
• Firm intake procedures for new client and new matter opening including procedures for working with new business and accounting personnel;
• IP Department procedures to effectively guide lateral IP attorneys through the process of file intake, opening and docketing; and
• Firm organizational structure to facilitate issue spotting and problem solving to maintain continuous momentum for file intake, opening and docketing.
  
  

Duties

IP Assistant will provide backup support to patent and trademark attorneys, as needed, in cases of absences or extended leave. May also provide overflow support to other IP Assistants in cases of excessive workload. Duties include:

• Reviews incoming mail for assigned attorney(s) and drafts appropriate correspondence and documents in response.
• Reviews and maintains weekly docket; coordinates with attorneys regarding deadlines.
• Prepares documents, instruction letters and filings of all direct-filed foreign applications.
• Coordinates execution and legalization of U.S. and foreign formal documents, as required.
• Prepares U.S. and foreign reporting and reminder letters.
• Prepares and electronically files with the USPTO documents such as, but not limited to: new applications, Statements of Use, Extensions of Time, Information Disclosure Statements, Issue Fees, Formal Drawings, Assignments, Declarations, Extensions of Time, Powers of Attorney and Responses to Office Actions.
• Prepares docket and portfolio reports as requested.
• Other tasks as required.
  
  

File Transfer Coordinator will handle all aspects of file on- and off-boarding for both patents and trademarks. Duties include:

• Performs detailed review of incoming data and deadlines.
• Prepares data for entry, either manually or by data import, into docket system. This may include locating and inserting missing information as available through public data sources.
• Coordinates with Accounting to open new matters and assign matter numbers to each record.
• Adds new matters to the docket system, either manually or by data import.
• Performs detailed review for accuracy of new records.
• Enters deadlines provided by former counsel into docket system, and verifies accuracy.
• Enters deadlines according to internal docketing procedures into docket system, and verifies accuracy.
• Prepares and runs CPi reports as requested.
• Maintains CPi Auxiliary Tables to ensure accuracy.
• Maintains data integrity of the CPi database.
• Notifies foreign counsel of change of representation.
• Prepares and files new Powers of Attorney in US and PCT applications and patents.
• Prepares and files Change of Representation in US and Madrid applications and registrations.
• Coordinates intake of electronic files from former counsel with BT’s File-Intake team.
• Coordinates review of annuities status with Annuities Supervisor.
• Other tasks as required.
  
  

The employee must be able to perform all essential job duties and responsibilities of this position satisfactorily and as outlined, with or without reasonable accommodations. Reasonable accommodation requests may be accommodated, absent undue firm hardship.

Qualifications

A qualified candidate should have a minimum of two years’ experience working as an Intellectual Property Assistant with both U.S. and foreign patent and trademark applications, ability to prepare associated documents and correspondence, and have a strong understanding of the life cycles of patents and trademarks, and associated deadlines and procedures.

• High School Diploma or GED required, bachelor’s degree preferred.
• Minimum of two years’ experience as an IP Legal Assistant, handling both patents and trademarks.
• Strong understanding of patent and trademark prosecution process and associated correspondence and deadlines.
• Exceptional attention to detail and good analytical and critical thinking skills.
• Ability to understand and maintain a daily docket.
• Excellent written and oral communication skills, including strong grammar, spelling and proofreading skills.
• An understanding of the data requirements of CPi software, patent and trademark terminology, types of IP prosecution matters and a working understanding of how deadlines associated with US and foreign intellectual property matters are processed by IP docketing personnel.
• Interpersonal skills necessary to communicate with office staff in new business, accounting and electronic file processing teams, staff of other law firms and lawyers and administrative personnel in firm offices in person, by email and telephone.
• Ability to communicate with lateral and firm attorneys and staff, to provide information with courtesy and tact, coordinate assignment of processing tasks and follow up regarding status regarding such tasks.
• Must be able to monitor, determine and address sources of firm processing delays in hard copy and electronic file transfer, matter opening and associated docketing.
• Ability to maintain client confidentiality.
• Proven ability to work independently as well as in a team environment.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Computer and database skills, including Word, Excel, Outlook and iManage. Experience using CPi preferred but not required.
• Work occasionally requires a high level of mental and visual effort when facilitating processing of a high volume of work.
  
  

This job description is intended to describe the general requirements of this position. As

such, it is not designed to cover or contain a comprehensive listing of job duties or

responsibilities required in this job. Subject to firm needs, duties and responsibilities of

this position may change at any time, on a temporary or permanent basis, and with or

without notice.

Working Conditions

• Normal office environment with little exposure to excessive noise, dust, temperature and the like.
  
  

The above is intended to describe the general content of and requirements for the

performance of this job. It is not to be construed as an exhaustive statement of essential

Functions, Responsibilities Or Requirements.

Equal Employment and Opportunity Statement:

Barnes & Thornburg is committed to equal employment opportunity in both principle and as a matter of policy. We will recruit, hire, train, promote, compensate and provide benefits to all applicants and employees without regard to ancestry, sex, race, color, ethnicity, national origin, gender, age, religion, religious creed, mental and/or physical disability, medical condition, military and/or veteran’s status, genetic information, marital status, sexual orientation, gender identity and/or expression, or any other basis protected by applicable federal, state and local laws. This policy applies to all recruiting, hiring, promotions, upgrades, layoffs, compensation, benefits, terminations and all other privileges, terms and conditions of employment. The firm complies fully with all federal, state and local equal employment opportunity laws.

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