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Intellectual Property Legal Administrator

  • Location: Falls Church, Virginia
  • Work Arrangement: Remote
  • Type: Full-time/Flex

Northern VA law firm is looking for an Intellectual Property Legal Administrator 
 

Hours/Schedule:  FT Flexible 

 

Job Type: Contract to Hire

 

Location Requirements: Remote in the DC or Boston area 

Rate: $35/hour 

 
Job Description: 

Member of a firm practice team responsible for supporting the firm’s attorneys and clients with regard to intellectual property matters, with areas focus in US and international patent and trademark prosecution, intellectual property portfolio management and litigation/contested matters.
 
Work collaboratively alongside other experienced IP professionals in support of a fast-moving, adaptive team of IP attorneys and registered patent agents. 
 
Perform all assignments in strict compliance with ethical guidelines governing the practice of law and firm standard procedures. Demonstrate good teamwork skills within and among practice teams and the firm to facilitate efficient and effective delivery of legal services with excellent client service. Consistently exhibit a high degree of professionalism.

 

 
Responsibilities:  

Patent and Trademark Prosecution Support. Actively contribute to the firm’s patent and trademark practice. Serve as the primary substantive resource for multiple patent attorneys or registered patent agents in managing an active docket of US/foreign patents/trademarks/applications. Assist in the preparation, filing and prosecution of US/foreign patent and trademark applications and other documents/formalities. Prepare foreign-filing application documents, including all related forms/correspondence, and tend to all formalities necessary for foreign counsel to prepare, file and prosecute “nationalized” foreign patent applications and national and regional trademark applications.  Interface with clients.
 
Docketing. Docketing is a primary area of responsibility for an IP specialist. Open new client matters and maintain the integrity of the firm’s docketing database.  Docket incoming patent and trademark related mail received from the USPTO, patent offices worldwide, foreign counsel, clients and route mail to the appropriate attorney, IP paralegal and/or IP specialist for action.  Monitor due dates to ensure all deadlines are timely met. Monitor and clear all out-going patent related mail that is directed to the USPTO, the PCT and foreign patent offices.
 
Intellectual Property Portfolio Management. Support the firm’s efforts to advance a “portfolio” approach to managing client’s patent and trademark portfolios. Generate data from the docket system and prepare meaningful reports for the purpose of helping clients understand the content and value of assets in the estate. Working with attorneys and prepare materials to support client matters and projects and provide relevant information for making decisions relating to patent- and/or trademark-filing and maintenance activities.
 
Prosecution Research and Support. At the direction of the firm’s attorneys or IP paralegals, conduct legal/intellectual property research, for example, trademark clearance searches, focused patent document (and file wrapper) searches, competitive products information, etc. Support efforts to collect, review and analyze documents in regard to client project such as due diligence activities, patent or trademark  infringement claims, portfolio reviews, etc.
 
Operational Excellence. Actively participate in the firm’s operational excellence initiatives. Actively contribute toward the firm’s goals of excellent client service, reducing total outside expenses while increasing the efficiency and practicality of the firm’s interactions with clients and other.  Assist in defining/executing firm team policies, procedures and best-practices necessary for the team to conduct its patent and trademark procurement activities efficiently, accurately, on-time and with minimal waste/re-work.  Maintain current understanding of US law and USPTO and PCT regulations in regard to intellectual property issues.  Offer suggestions for process and procedure improvement where warranted.
 

 

Qualifications:  
 

  • College degree
  • General knowledge of Intellectual Property filing and prosecution rules/regulations. 0-5 years of patent/trademark docketing and/or prosecution administration experience. 
  • Thorough knowledge/use of personal computers, including Microsoft Office applications, and proficiency with the USPTO PAIR and EFS, WIPO PCT filing, legal, trademark, patent and/or technical searching software such as Lexis-Nexis, Westlaw, and PatSnap as well as general web-based searching tools. Requires a high degree of proficiency in computerized searching strategies.
  • Experience with intellectual property docketing systems, preferably CPI, as well as with the general workflows (and responsibilities) of an intellectual property procurement team, is required.
  • Excellent communication and presentation skills, highly organized, results-oriented, motivated, independent, creative, and possessing a keen attention to detail.

 
 

 

 

FlexProfessionals respects and seeks to empower each individual and support the diverse cultures, perspectives, skills and experiences of its candidate network. FlexProfessionals does not discriminate on the basis of race, religion, color, sex, gender identity, sexual orientation, age, non-disqualifying physical or mental disability, national origin, veteran status or any other basis covered by appropriate law. The candidates whose resumes are shared with our business clients are selected on the basis of qualifications, merit, and business need.  

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