IP Specialist

Houston, TX

Summary

The IP Specialist is responsible for supporting attorneys across Intellectual Property practice areas including Patent, Trademark, and Litigation. This role requires billing 750 hours per year and involves a combination of billable and non-billable duties spanning docket management, document preparation, client communications, and administrative coordination.

Responsibilities

Responsible for billing 750 hours/year

Maintain secondary docket and case and file management, including uploading email communications and documents to docketing and DMS systems, as well as maintaining and updating files and client portals and attending any 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

• Coordination of client estimates and accruals, as well as invoicing process
• Maintain and update files, including file openings and conflict checks in InTapp
• May assist with drafting engagement letters
• May assist with intake activities
• Responsible for scheduling and coordinating travel arrangements (Attorney travel)
• Responsible for overseeing invoice payments/expenses/reimbursements
• Coordinate tracking of CLE for assigned attorneys

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

Litigation

• Manage docket and trademark prosecution practice for assigned client portfolios
• 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

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

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 (i.e. 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, but not limited to, IP Department-specific training

Compensation: $80,000.00-$100,000.00, plus overtime and bonus