IP AFD 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 IP AFD Specialist maintains and completes a 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 heavy volume of filing and administrative deadlines, including handling last minute filings and requests from clients, attorneys, and IP prosecution staff members.
• Actively participates in risk management by meeting all internal and statutory due dates, carefully reviewing file histories and client instructions, accurately preparing documents, maintaining files/procedures, and providing a timely and responsive quality of service.
• Strictly adheres to established policies and procedures to meet expectations of the IP practice group and clients; 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” (i.e. routine documents rarely require modification by a manager or attorney prior to filing/sending).
• 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), payment 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 USPTO.
• Performs other duties as assigned by leadership of the IP practice group.
The position requires a Bachelor’s Degree in a related field. Equivalent training and experience may substitute for education.
The position requires a minimum of one (1) year 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 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.
• 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.