Docketing Specialist

Docketing Specialist (PERM)

Location: All Offices (CT, DC, Florida, MA, NJ, NY, RI) - HYBRID

• The firm operates on a hybrid schedule with the majority of their positions (3 days in, 2 days remote)
• Bonuses are discretionary on a year-to-year basis, but employees usually do receive them. Start date determines eligibility.

Seeking an experienced Docketing Specialist to join the firm's expanding Trademark Group.  The Docketing Specialist is responsible for a wide range of trademark docketing and administrative functions, including processing US and Foreign Trademark mail utilizing the firm's docketing system (WebTMS). The Docketing Specialist will review and process all incoming trademark, copyright, and dispute mail from the USPTO, Clients, and Foreign Agents/Trademark Offices as well as de-docketing completed items and requests to update deadlines. The Docket Specialist will also process all new trademark matters utilizing the Firm's new business database, WebTMS and Document Management system. The Docket Specialist will save all external emails and incoming mail to the proper electronic file folders and distribute the same electronically.  The Docket Specialist will also communicate routinely with attorneys, paralegals and legal assistants and participate in assigned projects and/or tasks to support the trademark group.

Essential Functions:

• Monitors and maintains the integrity of the Firm's Trademark Docketing System (WebTMS)
• Assists in the development and maintenance of a Docket Manual and best practice materials relating to docketing and the Trademark Group 
• Identifies problem cases or actions; resolves or escalates to manager and attorneys when needed
• Quality Reviews all work product to ensure accuracy
• Runs daily, weekly and monthly reports in a timely and efficient manner
• Maintains and manages the firm's existing docketing platform and provides recommendations and insight to manager and leadership on upgrades, enhancements or replacement
• Reviews IP Country Law Rules of Practice and maintains proficiency of PTO procedural changes to ensure the Trademark team is in compliance
• Assists with IP client intake and transfer requests; coordinates with the Records Department, Billing, Matter Maintenance and other personnel on incoming and outgoing Trademark Portfolios, running reports and dockets and assisting with the transfer process start to finish
• Maintains a knowledge of trends, developments, and legislative rulings impacting intellectual property law, including revisions to international country law, USPTO procedural changes
• Perform research on various trademark office website to confirm data, bibliographic data, status of cases
• Adhere to firm standards and procedures; ensure team members follow procedures; reinforce/remind team of the proper protocol and procedures
• Monitoring daily deadlines; editing actions and adding extensions of time/grace periods when applicable
• De-docket action items upon proof of filing or notification of item being completed; asking questions if action item is incomplete or missing any information
• Identifying and reporting discrepancies and working to resolve them with attorney guidance 

Skills

• A deep and thorough knowledge of Trademark Prosecution, including U.S. and Foreign Jurisdictions; strong knowledge of procedures and regulations, including foreign and domestic prosecution, and post-grant/post-registration rules and maintenance fee deadlines/grace periods
• Knowledge of trademark terminology, prosecution procedures, and deadlines for both US and foreign intellectual property matters
• Proactive, independent, and helpful with all tasks assigned 
• Ability to use judgment and prosecution knowledge when updating the docket; keep case remarks clean and concise; asking for clarification when needed
• A strong focus on customer service and responsiveness
• Aptitude for continuous improvement and automation
• Excellent organizational and communication skills and be capable of promoting improvement-oriented ideas and developing new strategies
• Solid PC skills, including IP docketing databases, PDF programs, filing and other specialized IP practice platforms
• Proficiency in document management systems, workflow technology platforms, MS Office, Word, and Excel, New Matter/New Business Intake
• Work effectively and efficiently in a fast paced, deadline driven environment
• Ability to recognize and shift priorities when needed.