IP Docketing Specialist

We have an exciting opportunity for an IP Docketing Specialist at Eversheds Sutherland (US) LLP. We are searching for someone who wants to be a valued contributor and member of a talented and dynamic team of lawyers, paralegals and business professionals.

The IP Docketing Specialist is responsible for handling intellectual property patent prosecution and trademark docketing, working directly with IP attorneys and business professionals to ensure all deadlines are fulfilled and accurate, clear dockets, and generate reports. This position will support all aspects of U.S. and foreign patent and trademark docketing to accurately identify deadlines for benefit of our clients and the firm.

Responsibilities and Duties:

• Processes both electronic and paper mail.


• Reviews mail and specific relevant docket deadlines and inputs into docketing system.


• Ensures all docketing items are timely and accurately processed in accordance with firm policies.


• Reviews and inputs new matters into docketing system.


• Prepares and distributes specialized docket reports as requested.


• Maintains and updates all additions and changes in the docketing system.


• Performs other special projects within the department as assigned.


• Responds to written or verbal requests regarding attorney changes, docket date amendments, or any urgent matters submitted by business professionals.


• Experience researching IP status and history across major patent and trademark databases, including USPTO (Patent Center, TSDR), WIPO (Patentscope, Madrid Monitor), EPO (Patent Register), EUIPO (eSearch), and public databases across other domestic and international jurisdictions.


• Save, organize, and maintain electronic files in the document management system in accordance with department protocols.


• Assist with patent maintenance fees, annuity processes, and trademark renewal workflows.


• Other duties as required by the role.

Knowledge, Skills and Abilities:

Education:

• A Bachelor’s degree is preferred in a business-related field from an accredited college or university. An equivalent combination of an Associate’s degree, and related experience will be considered.

Experience:

• At least five years of substantive IP docketing experience at a major law firm or corporation required.


• Extensive knowledge of U.S. and foreign patents, PAIR, Trademarks and PCT.


• CPI or Pattsy experience is strongly preferred.


• Experience with IPR, PTAB, and/or TTAB proceedings a plus


• Working knowledge of USPTO procedures, 37 C.F.R., the MPEP, and the TMEP; commitment to staying current with rule changes.


• Strong substantive knowledge of docketing requirements.

Skills:

• Strongly analytical, organized, highly-motivated, proactive and detail oriented.


• Problem solver and a team player with the ability to exercise independence and professional judgment in a fast-paced environment.


• Excellent written, verbal, and people skills with the ability to "own problems" and resolve issues.


• Ability to handle confidential information with diplomacy.


• Maintain a high level of workflow and quality controls in multi-office locations, as well as strict confidentiality of client and firm matters.


• Ability to work under pressure to meet strict deadlines.


• Excellent interpersonal, written and verbal communication skills are required.


• Excellent computer skills and knowledge of MS Office Suite with proficiency in MS Word, Outlook and Excel is required.

This is a remote role and the salary ranges for this position vary depending on the geographic location and other factors such as experience, internal equity, market data, and job-related considerations. The range for this position is from $70,000 - $95,000, with offers contingent upon the various factors. The firm’s compensation strategy includes not just a base salary but also comprehensive benefits such as healthcare, paid time off, discretionary merit bonuses, life and disability insurance, retirement plans and tailored learning opportunities.

Eversheds Sutherland (US) LLP is committed to promoting diversity and inclusion within our Firm and in the larger legal profession. We believe that diverse skills, knowledge and viewpoints make us a stronger firm. Eversheds Sutherland (US) LLP maintains a policy of affording all employees and applicants equal employment opportunities without regard to actual or perceived race, color, religion, sex (including pregnancy, childbirth, lactation and related medical conditions), sexual orientation, gender (including gender identity or expression or transgender status), national origin, age, disability, genetic information, marital or familial status, domestic violence victim status, ancestry, amnesty, citizenship status, ethnicity, military and veteran status, or any other characteristic protected by applicable law. Unlawful discrimination, harassment and retaliation will not be tolerated in any of the Firm’s offices or any other work-related setting. Qualified individuals with a disability may request a reasonable accommodation in order to apply for a position or to enable them to perform the essential functions of a position for which they are otherwise qualified. EEO.