IP Secretary

New York, NY

M-F, 10AM-6:00PM 

Position Summary

As a member of a secretarial team, provides support to attorneys, patent agents and paralegals as needed. Provides high level of client services to assist in administering domestic and foreign patent prosecution dockets; reporting communication to clients; e-filing, familiarity with Office Action rules and classification and counting of claims; document processing; making travel arrangements and preparing travel itineraries for attorneys and paralegals; processing new business intake and expense forms; time entry for assigned attorney(s); answering telephones and taking messages; arranging meetings and conferences; monitoring incoming mail, faxes and e-mails; filing and other administrative duties as assigned. This position works in a team model environment with other secretaries to provide consistent high-quality service by using innovative technical skills and creative soft skills. 

Responsibilities

• Occasionally assist attorneys in the preparation and filing of documentation with the U.S. Patent and Trademark Office and PCT filings.
• Knowledge of Inter-Parte Reexamination (IPR) preparation and filing.
• Experience in preparing Freedom to Operate Opinions (FTO) and assistance in searches for same.
• Occasionally works with various foreign agents to file direct national patent and trademark applications.
• Document, prepare and send client reporting letters as required or requested within the IP group.
• Uses word processing and document management software (MS Office 2010, including Excel, Workshare Compare, DM, etc.) to prepare/revise, format and finalize a wide variety of documents, including correspondence, memoranda and legal materials.
• Prepares new client screening applications and conflict checks.
• Prepares expense reports and client billings and processes invoices for payment.
• Prepares a variety of routine correspondence and administrative forms.
• Strong proficiency working with IP patent docketing software, Private/Public PAIR and USPTO trademark database.
• Interacts on a daily basis with departments within the Firm to facilitate highest possible legal support to assignments and clients, including Accounting (check requests); Office Services (mail, FedEx, UPS, messengers); Reception (scheduling/arranging meetings and requested accommodations); Duplicating and Document Center.
• Establishes and maintains paper and electronic files in compliance with current Firm policies.
• Provides assistance to other Legal Secretaries within the Firm whenever necessary to meet the Firm and client needs.
• Answers, screens and places phone calls. 

Billable Responsibilities

• Filing documentation with the U.S. Patent and Trademark Office and PCT filings.
• Inter-Parte Reexamination (IPR) filing.
• Research on Freedom to Operate Opinions (FTO).
• Document, prepare and send client reporting letters.
• Communicate with various foreign agents to file direct national patent and trademark applications. 

Qualifications and Education

• Associates Degree preferred
• Minimum ten (10) years of legal secretarial experience in Intellectual Property –Patent, Trademark and/or Prosecution matters
• Advanced proficiency in MS Word and formatting documents with a minimum typing speed of 65 words per minute required
• The ability to work business hours with flexibility for overtime, as required

Personable, professional with strong organizational skills and drive for excellence.

Specific skills/attributes include:

• Ability to prioritize tasks in an effective and creative manner
• Shows good judgment
• Calm, cordial and effective under stress
• Detail-oriented with commitment to excellence
• Commitment to the team while showing initiative as a self-starter
• Professional demeanor and supportive temperament required
• Support all levels of assignments effectively and equally

Professional with recent experience working in Intellectual Property practice area, with patent and trademark experience in mid-size law firm. Specific skills include knowledge of PTO practices and procedures, docket reports, TEAS/TSDR system as well as electronic filing experience through PAIR with U.S. Patent and Trademark Office.