Patent Practice Secretary

Palo Alto or Salt Lake City

Reports to:   Secretarial Services Manager 

Preferred:    2 – 3 years of experience in Patent Prosecution in a law firm environment. 

What You Will Do

The Patent Practice Secretary’s role is to provide administrative support and patent prosecution support to assigned firm personnel; assist and relieve attorneys and other personnel of administrative and clerical work by performing essential duties and responsibilities which include the following:

Essential Job Requirements

• Ability to prepare new patent applications for filing, including provisional, non-provisional, CON, DIV, CIP, §371 Request for Continued applications and all related documents.
• Assist with preparing reporting communications for the attorney to the client.
• Prepare responses and/or amendments to Office Actions.
• Prepare formal documents, obtain appropriate signature and follow-up as needed.
• Upload documents to the client’s database in a timely manner.
• Review issued patents and prepare Certificates of Correction, as directed.
• Prepare an Information Disclosure Statement (“IDS”) or Supplemental Disclosure.
• Maintain reference citations, including updating Excel spreadsheet or computer database.
• Review the attorney’s docket, provide updated information to the docket staff and reconcile the docket as directed.
• Answer telephones for attorneys, as well as others in a professional manner; take messages and forward calls to appropriate parties.
• Receive and review incoming mail; process mail, including open, date stamp and route, as directed.
• Maintain the calendars of all assigned attorneys and schedule meetings for attorneys; remind meeting participants as necessary.
• Assist with revising routine correspondence and documents.
• Maintain skills necessary to function effectively and meet all expectations of the role, including the basic functions of core technology tools.
• Schedule meetings and notify all parties involved; remind participants of meetings.
• Assist with creating new client matter accounts (conflict checks, intakes, retainer letter and file opening).
• Maintain contact lists for client matters.
• Organize and maintain electronic and paper client files and keep filing up-to-date; retrieve existing files through Records Inquiry Online (RIO).
• Enter attorneys’ time.
• Clarify tasks; confirm understanding.
• Assist with monthly billing, including meeting the firm and client’s deadlines, photocopying and final preparation for mailing.
• Prepare travel arrangements for attorneys and for clients, if needed.
• Provide back-up support to team members as required.
• Accept change and work to incorporate change into daily work environment.
• Ability to work remotely, when requested, and ensure that tasks are completed timely and efficiently; maintains regular communication with staff, attorneys and supervisor while working remotely. Ability to follow firm policies and procedures while working remotely.
• Record tasks into Firm Daily Connect daily and accurately.
• All other duties as assigned. 

Skills, Knowledge and Abilities

• Provide good client service by maintaining a positive and professional attitude as well as positive and cooperative relationship with legal staff, peers and administrators, as well as when interacting by phone or in person with the firm’s clients and external contacts.
• Bachelor’s degree preferred, 1-2 years of experience in patent prosecution
• Familiarity with CFR, MPEP and other patent-related laws and regulations.
• Familiarity with reviewing and reconciling a patent docket.
• Basic knowledge of Patent Application Information retrieval System (Private PAIR), Electronic Filing System (EFS), and Electronic Patent Assignment System (EPAS).
• Basic knowledge of Microsoft Word, Outlook, Excel, and docket software.
• Provide high-level client service by possessing and utilizing strong telephone and interpersonal skills with legal staff, peers and administrators, as well as the firm’s clients.
• Exhibit effective communication skills by demonstrating tact, diplomacy and discretion when presenting information and responding to questions from clients, attorneys, managers, etc.
• Work to efficiently produce work product with a high level of attention to detail; reviews and proofreads documents for grammar, spelling, readability, etc.
• Able to keep abreast of practice area processes as appropriate to the position.
• Accept change and work to incorporate change into daily work environment.
• Able to work remotely, when requested, and ensure that tasks are completed timely and efficiently; maintains regular communication with staff, attorneys and supervisor while working remotely. Able to follow firm polities and procedure while working remotely.
• Basic knowledge of Finance Department forms (check requests, trust account service memos, expense reports).
• Basic knowledge of office organization, workflow and procedures.
• Basic knowledge and use of firm’s technological tools.
• Take initiative to learn new skills that will contribute to enhance performance of role.
• Ability to prioritize work and adjust priorities.
• Maintain reliable attendance record and punctuality.
• Embrace change and adapts well in new environments.