Job description

IP Lead Patent Formalities Specialist

Seeking an IP Lead Patent Formalities Specialist to join the IP Practice Services team of a major law firm. Successful candidate will have experience in all facets of Patent Prosecution plus have the ability to mentor and train a group of 4 Junior Ip Lead Formality Specialists. This is REMOTE but you need to live near the location of the firm. The IP Lead Patent Formalities Specialist is responsible for overseeing day-to-day workflow and operations of the Patent Formalities team comprised of 4 Junior IP Formalities Specialist. The Lead Patent Formalities Specialist independently monitors compliance of IP practice policies and procedures to ensure efficient and accurate completion of all IP Formalities functions in support of the Patent Client teams. Specific duties and responsibilities include, but are not limited to, the following:

Position Responsibilities:

• General oversight of incoming patent formalities support requests
• Coordinate and balance daily workflow of the Patent Formalities team, including providing direction for coverage when someone is out of the office, as well as assigning short and long-term projects
• Conduct quality review of Patent Formalities work and use that information to design training sessions for the group or elevate performance concerns to the Manager as needed
• Work directly with IP Practitioners and IP Specialists to identify challenges, participate in problem solving, and identify possible solutions, discerning when to reach out to the Manager
• Review and analyze metrics of department workflow and report to management with recommendations for areas of improvement
• Lead Patent Formalities department meetings and trainings
• Ongoing collaboration with IP Client Service Managers to ensure Patent Specialists receive adequate Formalities support in their specific areas of practice (i.e., US and Non-US patent prosecution)
• Familiarize and advise on established IP best practices
• Keep current with regulatory changes in IP prosecution
• Provide back-up to the IP Practice Support Manager (US) and the Patent Formalities team members
• Independently manage special projects and duties

Local office IP support:

• Proactively engage with practitioners and staff, developing working relationships to be an effective gateway to all services of the IP Practice Services department
• Communicate local issues to the appropriate member(s) of the IP leadership team to ensure consistent and effective team management
• Assist with troubleshooting issues and work closely with IP leadership team to provide responsive and efficient people or systems support to meet practitioner and client needs
• Participate in orientation programs of newly hired practitioners, specialists, and staff as needed

General responsibilities:

• Work effectively and collaboratively as a team leader and member
• Work within the guidelines of established IP principles and practices
• Interpret, clearly communicate and effectively enforce policies and procedures
• Maintain high standards for internal/external client service and quality control
• Inspire and lead in a way that gets the best contribution from a wide range of team members
• Champion and promote diversity and inclusion initiatives to help drive positive change
• Prepare and deliver oral and written communications that are concise and convey enthusiasm and innovative thinking
• Nurture new ideas and concepts. Identify, lead and manage innovative approaches to business challenges and work with IP leadership, BPC and other departments to evolve operations and system processes that increase efficiency and mitigate risk
• Moderate and facilitate meetings comprised of IP partners, associates, practice group professionals and other administrative staff; set and manage realistic expectations for project deliverables; put ideas into a practical context and coordinate efforts of multi-disciplinary teams to meet project deliverables
• Continuously review productivity and efficiency of staff; recommend educational opportunities to provide training that will enhance employee performance
• Recommend and implement process improvements and changes directed to increasing efficiency and improving service levels
• Immediately report all risk management-related concerns following proscribed risk reporting process detailed in the Patent Policies & Procedures Manual
• Independently manage and work collaboratively on special projects
• Maintain department procedure manuals
• All other duties as assigned or required

Skills & Experience

Required:

• Exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
• Ability to work extended and/or weekend hours, as required
• 4+ years’ experience in an IP-related role
• Experience accessing, navigating, researching and/or securing IP status documents and details from patent office databases, including USPTO systems (PAIR, Certified Copy Center), WIPO Patentscope, and the EPO Patent Register

Preferred:

• Bachelor’s Degree
• Previous law firm experience
• Experience accessing, navigating, researching and/or securing IP status documents and details from patent office databases, including USPTO’s TSDR system, WIPO’s Madrid Monitor, EUIPO eSearch, and other public IP databases
• Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

Competencies

• Ability to work independently and under pressure/tight time constraints
• Aptitude for multi-tasking
• Creative and entrepreneurial approach to problem-solving and process improvement
• Strong analytical ability and implementation skills
• Strong project management skills
• Flexible and agile, ability to reprioritize with changes in the business
• Ability to meet deadlines and effectively complete operational and project-based assignments
• Strong initiative and a get-it-done attitude
• Excellent communication, interpersonal, leadership and management skills
• Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs

Job Type: Full-time

Pay: $90,000.00 - $150,000.00 per year

Benefits:

• 401(k)
• Dental insurance
• Employee assistance program
• Employee discount
• Flexible schedule
• Flexible spending account
• Health insurance
• Health savings account
• Life insurance
• Paid time off
• Parental leave
• Professional development assistance
• Referral program
• Retirement plan
• Tuition reimbursement
• Vision insurance

Schedule:

• 8 hour shift
• Day shift
• No weekends

Supplemental pay types:

• Bonus pay

COVID-19 considerations:
Candidates are preferred to be vaccinated.

Security clearance:

• Confidential (Required)

Work Location: Remote

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