IP Docketing Administrator

About the role

Join Nutter McClennen & Fish LLP as a Docketing Administrator in the Intellectual Property Department. The Docketing Administrator member will assist with the preparation of US and foreign documents for filing in respective patent offices, prepare follow-on prosecution documents, track and communicate deadlines, perform relevant on-line searches, prepare cost estimates, and review intake of daily correspondence to determine what needs to be communicated to the client. This position is ideal for someone who is looking for a challenging role offering the opportunity to grow and develop.

This position is a full-time, non-exempt position in the Boston office. The regular hours will be 9:00 a.m. to 5:00 p.m., Monday through Friday, offering the flexibility to work remotely two days a week. In addition, straight time is paid for hours worked in excess of 35 to 40 in the workweek. Overtime is in effect after the completion of 40 hours in the workweek. From time to time, it may be necessary for the Docketing Administrator/Junior Paralegal to work additional hours or change their hours to ensure all coverage and/or deadlines are met.

Responsibilities

PRIMARY RESPONSIBILITIES:

• Cross-trains and manages daily docketing of US and foreign patent and trademark correspondence ensuring all critical docket dates are accurately recorded.
• Coordinates with external docketing team to resolve outstanding docket issues and manages Docket Box.
• Reviews final deadlines on weekly basis and emails attorneys/staff to obtain information for completing non-extendable deadlines.
• Cross-trains in annuity management to make annuity and maintenance fee payments (US and foreign) by utilizing our third-party vendor and corresponds with foreign associates with respect to inquiries related to annuities and maintenance fees, as needed.
• Keeps the annuity docket accurate and up to date, including keeping track of those annuities in extension periods.
• Performs quality control audits on a regular basis to ensure the accuracy and timeliness of items entered into the docketing database.
• Assumes additional responsibilities as requested by IP Manager.

SECONDARY RESPONSIBILITIES:

• Supports various intellectual property attorneys and Senior Paralegals to provide excellent service to clients as personnel needs arise.
• Prepare and file, and/or collaborate, on all aspects of US PCT and foreign prosecution.
• Draft formality documents for client’s signature.
• Timely reports official communications to client and foreign associates.

Qualifications

• Bachelor’s degree preferred.
• 2-3 years’ of docketing experience.
• Knowledge of procedural requirements for filing US and PCT patent applications with the USPTO and the World Intellectual Property Office (WIPO).
• Hands-on electronic filing experience at the USPTO.
• Knowledge of foreign filing and national phase entry procedural requirements.

Skills

• Proficiency in Microsoft Office.
• Excellent grammar, spelling and proofing for content and context.
• Excellent interpersonal skills, including strong communication skills, tact and diplomacy, as well as the ability to interact positively and productively with all levels of the Firm.
• Ability to assume responsibility for assigned tasks, and if necessary, able to delegate workload in order to manage multiple tasks and meet deadlines.
• Demonstrates organization, flexibility, and reliability to set priorities, as well as the ability to manage multiple responsibilities and works well under pressure.
• Detail-orientated and self-motivated.
• Ability to work both independently and collaboratively with team members as well as attorneys and staff throughout the firm.
• Adaptable to last minute changes and disruptions, and able to accommodate occasional overtime work when required.

Physical Demands

The physical demands described here are representative of those that must be met by an employee to successfully perform the essential functions of this job. Reasonable accommodation may be made to enable an individual with disabilities to perform the essential functions of this position. While performing the duties of this job, the employee is required to sit/stand at their desk for most of their job duties. There is the need to frequently move around the office. There will be a moderate amount of standing, stooping, kneeling, bending, and reaching for some of the job duties. Visual requirements include reading on a computer screen as well as printed materials. A high degree of dexterity is required due to frequent use of a keyboard and telephone. Verbal and auditory requirements include the ability to communicate clearly over the telephone as well as in person. There is a low level of grasping, lifting, pushing and/or pulling of objects of less than 25 lbs.

Pay

The anticipated pay range for this role is $70,000 - $95,000.