IP Specialist

Polsinelli strives to create an environment where team members are encouraged to bring their creativity and professional passions into the workplace.

About the role

We are seeking an IP Specialist to join our Houston office. This role is ideal for an engaging professional with a keen eye for detail who thrives in a dynamic team environment.

Responsibilities

Core Responsibilities

• Responsible for billing 750 hours/year
• Maintain secondary docket and case/file management, including:
  • Uploading email communications and documents to docketing and DMS systems
  • Maintaining and updating files and client portals
  • Attending status meetings
• Effectively set priorities, meet deadlines, and manage multiple projects, including preparation and maintenance of internal docket reports, charts, and to-do lists
• Create, edit, format, and proofread documents, memoranda, correspondence, spreadsheets, and presentations with the highest level of accuracy and attention to detail
• Prepare and circulate reporting letters to client(s) and/or outside counsel or vendors

Non-Billable Duties

• Coordinate client estimates and accruals, as well as invoicing process
• Maintain and update files, including file openings and conflict checks in InTapp
• Assist with drafting engagement letters
• Assist with intake activities
• Schedule and coordinate travel arrangements (Attorney travel)
• Oversee invoice payments/expenses/reimbursements
• Coordinate tracking of CLE for assigned attorneys
• Other duties as assigned

Billable Duties (by assigned IP practice area)

Patent

• Manage docket and patent prosecution practice for assigned client portfolios
• Assist with coordination of invention harvesting meetings and patent prosecution tasks with client and team
• Prepare and circulate reporting letters to client(s) and/or outside counsel or vendors for notices issued by the USPTO and other patent offices
• Draft patent prosecution templates, such as formalities, and electronically file with USPTO
• Compile, upload, and electronically file US patent applications with USPTO
• Review filed and issued patent communications to identify any errors or required corrections
• Review issued patents for errors, determine expiration date of patent, and prepare certificate of correction, if necessary
• Review, prepare, monitor, and update IDS charts and/or client portfolio spreadsheets as needed
• Other duties as assigned

Trademark

• Manage docket and trademark prosecution practice for assigned client portfolios
• Assist with coordination of trademark searches, maintenance reminders, and trademark prosecution tasks with client and team
• Prepare and circulate reporting letters to client(s) and/or outside counsel or vendors for notices issued by the USPTO, WIPO, TTAB, Foreign Trademark Offices, and Copyright Office
• Draft trademark maintenance reminders
• Other duties as assigned

Litigation

• Coordinate project files, including drafting internal and external communications related to ongoing litigation tasks
• Draft and transmit legal documents, memoranda, and correspondence to clients, witnesses, and court officials by electronic filing, fax, email, mail, and/or messenger
• Assist in setting up review databases and archiving data as needed
• Analyze and generate reports from data, ensuring accurate and efficient data handling
• Draft basic search queries and collaborate with attorneys to identify relevant documents
• Conduct thorough Quality Checks (QC) on document productions to ensure accuracy
• Assist with calculating and managing litigation timelines
• Potential travel for assistance at depositions, mediations, and trials
• Other duties as assigned

Requirements

• 5+ years of related experience
• Knowledge of specific Intellectual Property rules and procedures, as well as keeping abreast of department guidelines
• Exceptional verbal and written skills, as well as administrative and management skills
• Exceptional typing skills; ability to draft and/or edit documents accurately and quickly
• Critical thinker who works efficiently, using available technology and strives to simplify tasks and enhance efficiency
• Ability to pay attention to the minute details of a project or task (e.g., calendaring, meeting coordination, timesheet entries, travel plans, file openings)
• Proficient in IP Docketing System, InTapp, Chrome River, iManage, Adobe, and Microsoft programs (Word, Excel, and Outlook)
• Annually complete eight (8) hours of continued technical education through the firm’s training department, including IP Department-specific training