Monitors and maintains U.S. and foreign trademark and patent docketing database, PATTSY WAVE*****, as well as responsibility for internal docketing, and generating reports and reminders for firm attorneys and firm clients
Assists with recording patent, trademark and copyright assignments and security interests with the USPTO and the U.S. Copyright Office
Prepares, files and prosecutes domestic trademark applications, including drafting applicable documents and routine client reporting
Prepares and files Responses to Office Actions, Statements of Use/Extensions of Time, and trademark renewal documents
Prepares and files Information Disclosure Statements for patent applications
Communicates with USPTO, attorneys, paralegals, liaisons, and staff about docketing and prosecution matters
Communicates with clients in respect of ongoing activity in US and international patent and trademark matters
Communicates with foreign associates with respect to international patent and trademark applications and registrations/renewals
Reviews weekly trademark watch notices for potentially conflicting applications against which action may be necessary
Reviews USPTO and outside counsel correspondence, dockets new cases and new due dates
Assists with handling issues of domain name/website infringements, including transfer of domain names
Provides information and recommendations on various matters under the oversight of lawyer(s)
Presents information effectively to lawyers and clients and responds to questions
Tracks and records time in Intapp Time system
Contributes to the overall team effort by working with all members and levels of personnel in various locations throughout the Firm
Follows the ethical requirements as set forth in the Rules of Professional Conduct of the state
Performs other duties as assigned
Essential Job Specifications/Qualifications
Demonstrated knowledge of U.S. and international trademark and patent prosecution and registration procedures
Demonstrated knowledge of U.S. and international trademark and patent docketing procedures
Demonstrated knowledge of trademark and patent docketing software.
Proficiency with Microsoft Office products, and PDF Pro
Ability to organize large amounts of data, both hardcopy and electronic, into an easily retrievable system
Demonstrated problem solving skills and the ability to work independently in a fast-paced environment
Positive attitude, team player, pro-active and able to handle pressure
Ability to pay close attention to detail and to perform a myriad of tasks on a daily basis
Ability to follow up as necessary to ensure both internal and external deadlines are met
Ability to be flexible, able to adapt to changing work priorities, workflow and work assignments
Ability to work occasional extended hours with little or no notice
Ability to regularly report to work on the days and times scheduled
Education/Experience/Certifications
Minimum of five (5) years of intellectual property prosecution experience
BA/BS degree and/or Paralegal certificate
All qualified applicants will receive consideration for employment without regard to race, color, national origin, age, ancestry, religion, sex, sexual orientation, gender identity, gender expression, marital status, disability, medical condition, genetic information, pregnancy, or military or veteran status. We consider all qualified applicants, including those with criminal histories, in a manner consistent with state and local laws, including the California Fair Chance Act, City of Los Angeles' Fair Chance Initiative for Hiring Ordinance, and Los Angeles County Fair Chance Ordinance. For unincorporated Los Angeles county , to the extent our customers require a background check for certain positions, the Company faces a significant risk to its business operations and business reputation unless a review of criminal history is conducted for those specific job positions.