Senior IP Applications and Formalities Specialist
- 1001 Pennsylvania Avenue NW, Washington, DC 20004, USA
Founded with a commitment to build a different kind of law firm, Crowell & Moring LLP today is an international law firm representing clients in litigation and investigations, regulatory and transactional matters. We are internationally recognized for our representation of Fortune 500 companies in high-stakes litigation, as well as our ongoing commitment to pro bono service and diversity. With nearly 550 lawyers based in seven offices in the United States and Europe, the firm helps international corporations and emerging enterprises navigate complex legal challenges and create business solutions across the globe.
The Senior IP Application & Formalities Specialist maintains and completes a very heavy docket of patent and trademark prosecution related filings and supporting processes, adapts quickly to rapidly evolving practice needs and technologies, maintains positive and professional contact with internal and external clients, and observes the confidentiality of firm matters.
• Successfully completes a very heavy volume of filing and administrative deadlines, including handling last-minute filings and requests from clients, attorneys, and firm administration.
• Actively participates in risk management by meeting all internal and statutory due dates, a careful review of file histories and client instructions, accurate preparation of documents, file maintenance/handling procedures, timeliness/responsiveness, and overall quality of service.
• Strictly adheres to established policies and procedures to meet expectations of firm administration, clients, and attorneys; identifies and applies special client instructions and attorney preferences related to workflows, document preparation, and billing.
• Prepares all documents to be filed and/or sent to the client in “signature-ready order” and applies a detailed self-review process prior to submitting work directly to an attorney or through EFS-Web (e.g. without Coordinator pre-review).
• Prepares and files documents related to utility (national phase, continuing, and provisional) applications and design applications, including preliminary amendments, at the United States Patent and Trademark Office (USPTO).
• Prepares and files other USPTO Formalities documents, Information Disclosure Statements/form SB08A/B (including identifying, electronically obtaining, and accurately citing U.S., Foreign, ISR and NPL references based on client instructions, documents received, and prior file histories), pays of Issue/Publication Fees, and other documents as directed by management.
• Maintains up to date knowledge of the rules of practice in relation to the U.S.P.T.O.
• Participates in training others in departmental procedures and client preferences.
• Reviews the work of others in the department to ensure that it has been prepared in “signature-ready order” prior to submission to the attorney.
• Performs other duties as assigned by firm management.
The position requires a Bachelors Degree in a field in which the necessary knowledge, skills and abilities relevant to the position were attained. Equivalent training and experience will substitute for education.
The position requires a minimum of three (3) years of directly related experience during which knowledge, skills and abilities relevant to the position were attained.
Knowledge, Skills and Abilities
• Demonstrated ability to prepare a heavy volume of accurate and complete documents that meet USPTO filing requirements related to new applications and pre/post allowance formalities.
• Demonstrated ability to identify complicated nuances of USPTO document preparation and procedure, research regulations and filing requirements, and suggest filing or client contact strategies to meet USPTO requirements.
• Demonstrated ability to identify and meet deadlines based on USPTO correspondence, client instructions, and other documents, and manage associated risks by filing in advance of due dates whenever possible.
• Demonstrated ability to make efficient, accurate, and skilled use of USPTO resources including PAIR, EPAS, EFS-Web, Advanced Patent/Assignment Database searching, and to locate and download foreign references including partial translations and abstracts as available through public online resources.
• Demonstrated ability to evaluate client-supplied documents and determine if the documents are sufficient to obtain a filing date, satisfy a USPTO deadline, or meet the current requirements for Information Disclosure, and take steps as necessary to correct any deficiencies in the documents prior to deadlines.
• Demonstrated Intermediate PC knowledge, MS Word, PDF conversion tools, MS Outlook, and document management software. Intermediate knowledge related to use of equipment including scanners, copiers, facsimile machines. Basic knowledge of MS Excel, PowerPoint, computerized docketing, and billing systems.
• Demonstrated ability to accurately type 70 words per minute.
• Reliability and dependability with some flexibility regarding work schedule and availability for overtime as requested to accommodate client and attorney business needs.
• Demonstrated ability to work effectively with others in a cooperative, enthusiastic and friendly manner to accomplish position functions and participate in team efforts.
• Must possess a thorough command of the English language, including excellent spelling, grammar and punctuation.
• Ability to retrieve and distribute files, written documents or office supplies weighing up to 12 pounds and ability to retrieve and replace objects from shelves of up to 6 feet high.
Crowell & Moring LLP offers a competitive compensation and comprehensive benefits package which includes progressive options such as back up child care, wellness programs, cultural events and social activities. We take great pride in our positive, friendly culture that rewards hard work and success, at the same time recognizing the importance of family and community service.
Crowell & Moring LLP participates in the E-Verify program.