Senior Patent Practice Secretary

Palo Alto, CA; Centerville, UT; or Roseland, NJ

Summary

The Senior Patent Practice Secretary provides administrative support and performs complex and specialized patent support activities related to the specific work and function of the attorneys/agents in the patent group. This role may also provide some level of client management support to the attorneys and clients. This position relieves the attorneys and other personnel of administrative and clerical work by performing essential duties and responsibilities, which includes the following:

Responsibilities

• General legal secretarial duties, including but not limited to, answering telephones for attorneys as well as others in a professional manner; taking messages and forwarding calls to appropriate parties; processing incoming/outgoing mail; calendaring and scheduling for attorneys as well as on department calendar (if applicable); opening new client matter accounts (conflict checks, intakes, retainer letter and file opening); organizing and maintaining electronic and paper client files and keeping filing up-to-date; retrieving existing files through RIO working with the Records staff to close out and send files to off-site storage; entering attorneys’ time; preparing travel arrangements for attorneys and clients.
• Provide high-level assistance with preparing new patent applications for filing, including provisional, non-provisional, CON, DIV, CIP, §371 Request for Continued Examination (RCE) applications and all related documents, as well as preparing and filing documents with the U.S. Patent and Trademark Office (USPTO), various international patent agencies (such as the International Bureau) and filing patent applications with the corresponding foreign Patent Office via the foreign agents.
• Assistance with preparing and reporting incoming communications to the client in a timely manner.
• Prepare and file responses and/or amendments to Office Actions.
• Prepare and file Information Disclosure Statement “IDS” or Supplemental Disclosure, maintain reference citations, including updating Excel spreadsheet or computer database.
• Prepare formal documents, obtain appropriate signature and follow-up as needed.
• Upload documents to the client’s database in a timely manner and ensure information and/or documents are uploaded accurately.
• Review issued patents and draft Certificates of Correction, as needed.
• Review Notice of Allowance, prepare checklist and ensure completeness prior to payment of Issue Fee.
• Communicate with the docket staff regarding calendaring and docketing correspondence and action due dates to and from the various Patent Offices and for international and foreign patent applications.
• Review and monitor client’s docket, follow-up as needed, provide updated information to the docket staff and reconcile the docket on a regular basis.
• Review attorney’s docket, provide updated information to the docket staff and reconcile the docket on a regular basis.
• Learn and maintain knowledge of practice and client-matter history.
• Take initiative, with attorneys’ permission, to review emails, delegate to other parties or escalate to attorney for action.
• Prepare travel arrangements for attorneys and clients, as needed.
• Maintain skills necessary to function effectively and meet all expectations of the role, including the basic functions of core technology tools.
• Participate in firm training opportunities; participates in training of other employees and staff members in order to promote cross-training of all employees, assists colleagues in learning new skills/tasks in order to integrate them into the team/firm.
• Maintain confidentiality of all client and firm information and procedures.
• Ensure client satisfaction is achieved throughout all position responsibilities; regularly review client service procedures and standards related to the position; identify and recommend improvements and enhancement to client service.
• Maintain contact lists for client matters.
• Assist with reviewing and editing pre-bills and distribute pre-bills for review as needed; follow-up to ensure monthly billing is complete in accordance with firm and client’s deadlines.
• Provide back-up support to team members as required.
• Ability to work remotely and ensure that tasks are completed timely and efficiently; maintains regular communication with staff, attorneys and supervisor/manager while working remotely.  Ability to follow policies and procedures while working remotely.
• All other duties as assigned.

Qualifications

• Provide outstanding client service by maintaining a positive and professional attitude, develop and maintain positive and cooperative relationships with legal staff, peers and administrators, whether interacting by phone or in person with the firm’s clients and external clients.
• Bachelor’s degree preferred, 5+ years of experience in patent prosecution.   Law firm experience preferred.
• Advanced knowledge of CFR, MPEP and other patent-related laws and regulations.
• Working knowledge and experience with reviewing and reconciling a patent docket.
• Working knowledge and experience with the USPTO’s Patent Center and Electronic Patent Assignment System (EPAS).
• Proficient with Microsoft Word, Outlook, Excel, docket software, database management and contact management.
• Demonstrate skill in reading, analyzing, organizing, and interpreting documents, including legal and regulatory documents, patent documents, as well as instructions furnished in written, oral, diagram or schedule format.
• Exhibit effective communication skills by demonstrating tact, diplomacy and discretion when presenting information and responding to questions from clients, attorneys, managers, etc.
• Demonstrate ability to solve problems and deal with a variety of variables in situations where only limited information is provided.
• Effectively multi-task and handle competing priorities.
• Efficiently produce work product with a high level of attention to detail; review and proofreads documents for grammar, spelling, readability, etc.
• Keep abreast of practice area processes as appropriate to the position.
• Thorough knowledge of office organization, workflow, and procedures.
• Thorough knowledge and use of firm’s technological tools; shares knowledge with colleagues
• Demonstrate ability to communicate with finesse, use tact, diplomacy and discretion with firm contacts and clients.
• Take initiative to learn new skills that will contribute to enhanced performance of the role.
• Ability to work independently as well as part of a team, as needed.

Compensation

The salary range for this role is $70,000 – $120,000. Compensation depends on experience, qualifications, and location.

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