Senior IP Docketing Specialist
- 455 N Cityfront Plaza Dr, Chicago, IL 60611, USA
Crowell & Moring LLP is an international law firm with offices in the United States, Europe, MENA, and Asia that represents clients in litigation and arbitration, regulatory and policy, and transactional and corporate matters. The firm is internationally recognized for its representation of Fortune 500 companies in high-stakes litigation and government-facing matters, as well as its ongoing commitment to pro bono service and diversity, equity, and inclusion.
The Senior IP Docketing Specialist supports the IP practice to function in a consistent and productive manner. The Senior Specialist is both responsive and creative in identifying the needs of the Docket Department, and ensures that all documents received have been docketed and distributed accurately and timely.
• Functions as a key member of assigned team to provide clearance review on a predetermined calendar schedule, including monitoring work flow and maintaining the integrity of the filing logs in accordance with established policies and procedures.
• Audits and analyzes Foundation IP (“FIP”) data sets, including integrity of field information and message log activity, on a regular basis to reduce risk. Works closely with the Docket Manager and other docketing staff in proposing and implementing changes either with processes, procedures and/or policies related to the FIP system.
• Assists in providing orientation for all new hires, including staff and attorneys, within the IP Practice, to ensure understanding and expectations related to use of IP technology and various IP applications, such as workflow engine functions, to maximize efficiency and reduce risk.
• Ensures that policies and procedures are being followed and met on a daily basis by IP Docketing staff and IP Prosecution support staff and attorneys in accordance with established firm guidelines.
• Creates and establishes sound documentation of all Docket Processes to identify any issues that may be revised for efficiency.
• Assists management in the planning, implementation and rollout of specific IP application training on new rules and/or requirements as related to the FIP system, including documentation on the use of practice-specific software.
• Maintains and distributes an electronic global docket calendar as assigned, for domestic/international patents, trademarks and inter-partes as required within the Docket Department’s established procedures.
• Performs and provides follow-up on the performance of routine data transfers, quarterly updates (maintenance) and/or extracts to annuity/maintenance providers etc.
• Performs second eye review of docketed work routinely.
• Responsible for the overall integrity of the docket database, including daily maintenance and reporting.
• Maintains a thorough knowledge of the docket database and makes recommendations for changes to the docketing management system to ensure its integrity, to enhance user services and to gain maximum advantage of the automation business processes within the system.
• Responds to questions and problems from the IP Docket Staff, Attorneys and staff in relation to docketing of due dates.
• Provides support to the end users to enable them to accomplish their duties in an efficient and productive manner.
• Maintains the docket records according to established policies and procedures, performs all functions relating to review of documents, and exercises discretion and confidentiality in maintaining contact with clients, attorneys and staff.
• Performs other duties as assigned.
The position requires a Bachelor’s Degree in relevant field. Equivalent training and experience may substitute for education.
The position requires a minimum of three (3) years of increasingly responsible, directly related experience during which knowledge, skills and abilities applicable to the position were demonstrated.
Knowledge, Skills and Abilities
• Knowledge of and experience with USPTO resources such as PAIR and other International IP Law databases.
• Ability to identify and analyze complex issues and problems in relation to managing data.
• Familiarity with established methods for maintaining current docketing knowledge on industry standard docketing practice, intellectual property regulations, and available related technologies.
• Possess and maintain a working knowledge of docket software applications.
• Strong people and task management skills with the ability to motivate and develop staff in a fast-paced environment.
• Excellent proofreading skills and attention to detail.
• Ability to multi-task and work independently.
• Strong oral, interpersonal and written communication skills necessary to establish and maintain positive relationships, and to communicate and comprehend instructions effectively to and from a diverse group of clients, attorneys and staff with courtesy and tact.
• Ability to provide quality client service to both internal and external contacts, regarding non-legal matters of a routine nature.
• Demonstrated ability to communicate clearly and effectively, both orally and in writing with attorneys, staff and clients.
• Demonstrated ability to work effectively both independently and with others in a cooperative, enthusiastic and friendly manner to accomplish position functions and participate in team efforts.
• Ability to adapt to changing priorities and maintain a productive and committed work effort, meeting deadlines and management workload.
• Ability to communicate and follow instructions effectively from a diverse group of clients, attorney and staff and provide information with courtesy and tact.
• Must possess a thorough command of the English language, including excellent spelling, grammar and punctuation.
• Ability to represent the firm with honesty, integrity, and professionalism, consistently acting in an ethical manner.
• Intermediate knowledge of MS suite to produce quality written communications such as memos, spreadsheets, slides, and standard work documents.
• Advanced knowledge of creating queries, rule updates, global changes within a SQL based system is highly desired.
• Ability to type approximately 55 wpm.
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.