Katten Muchin Rosenman LLP
IP Administrator (Legal)
Katten is a firm of first choice for clients seeking sophisticated, high-value legal services in the United States and abroad. Our nationally recognized practices include corporate, financial services, litigation, real estate, environmental, commercial finance, insolvency and restructuring, intellectual property, and trusts and estates. Our more than 650 attorneys serve public and private companies, including a third of the Fortune 100, as well as a number of government and nonprofit organizations and individuals. We provide full-service legal advice from locations across the United States and in London and Shanghai.
Intellectual Property (IP) Administrator
The position can be based out of Katten's Charlotte office or working remotely near Raleigh-Durham or surrounding areas or located in our Chicago, Dallas, Houston, Los Angeles - Century City, New York or Washington, DC Office.
Under the general direction of assigned attorney(s) or other legal personnel and according to established Firm policies and procedures, the IP Administrator plays a critical role in litigation support and prosecution of U.S. and foreign patent applications through the entire prosecution cycle. The duties of this position include working closely with internal and external IP counsel to ensure strategic filing and prosecution of patent applications and filing and preparing of IP litigation materials under minimum attorney supervision. Additional duties involve multi-tasking complex document production with heavy administrative functions and client contact; with both requiring a high degree of executive secretarial and technical skills. Maintains professionalism and strict confidentiality in all client and Firm matters.
ESSENTIAL DUTIES AND RESPONSIBILITIES include, but may not be limited to, the following. Other duties may be requested and/or assigned. Regular and predictable attendance is an essential function of the position. Essential functions are primary job duties that an individual must be able to perform successfully with or without a reasonable accommodation. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.
Generate, prepare, and organize documentation and forms requisite to the patent prosecution practice area and litigation practice area, such as applications for filing, amendments, assignments, certificates of correction, declarations/powers of attorney, disclosure statements, status reports, claims, briefs, subpoenas, motions, notices, orders, interrogatories, tables of authority, extensions of time, etc.
Prepare and organize required documentation relevant to court filings and inter partes review petitions including motions, notices, orders, subpoenas, etc. Oversee and coordinate filings with Docket and ensure pertinent dates are docketed. Maintain knowledge of electronic court filing procedures. Index all pleadings.
Oversee all aspects of patent prosecution filings from initial preparation of required documents and forms through post-issuance reexamination and reissuance. Assemble documents for attorney's signature. Ensure pertinent dates are docketed.
Receiving, tracking and reporting out correspondence received from USPTO and foreign agents. Developing and maintaining knowledge of patent office rules and procedures. Developing, understanding and documenting client procedures and special instructions.
Create, edit, and compile large, complex, heavily formatted documents as well as prepare correspondence, memoranda, and other legal documents from draft or dictated text utilizing MS Word software. Proofread all documents for accuracy and completeness. Compose correspondence when appropriate.
Open new client matters and request conflict of interest checks.
Maintain up-to-date listing of client/matter names and numbers for each attorney/legal personnel.
Make travel arrangements, prepare itineraries, and compile documents for travel-related meetings.
Prepare expense reports for each attorney/legal personnel. Submit to accounting for processing.
If applicable, prepare and process client billing utilizing Firm billing software. Review/edit/prepare and proofread prebills and invoices; assure client billing is sent out accurately and timely.
KNOWLEDGE, SKILLS, AND ABILITIES
Minimum of Bachelor's degree in Chemistry or a relevant field. A minimum of 2 years of experience as a patent administrator, IP paralegal, patent specialist, or patent docketing.
Computer proficient with experience and working knowledge of MS Word required. Ability to work with complex, heavily formatted documents and produce documents from transcription. Working knowledge of Outlook, Excel, HotDocs, LegalKEY, Adobe Reader, and PowerPoint preferred. Keyboarding skills of 45 wpm preferred. Familiarity with electronic court filing procedures preferred, including PTAB and individual state filings. Knowledge of PAIR to obtain patent prosecution history.
Experience in intellectual property, particularly patent filings and docketing systems, strongly preferred. Hands-on experience with one or more IP asset/workflow management solutions a plus.
Excellent organizational skills including record keeping, data collection, and system information. Ability to compile and analyze data and furnish information in report format, written correspondence, e-mail, or verbally.
Dependable team player who works collaboratively and cooperatively with others in a team-oriented environment. Ability to act independently and make decisions within scope of the position's responsibilities. Willingness to learn new procedures, software packages, and policies.
Analytical and technical skills requiring an aptitude for detail, precision, and logic in order to perform essential administrative/clerical functions and utilize Firm software.
Exhibit high degree of initiative in managing multiple priorities simultaneously in a fast-paced, deadline-driven, detail-oriented work environment utilizing excellent judgment, administrative abilities, and decision-making skills. Ability to work with frequent interruptions and adapt to changes in workflow.
Excellent interpersonal, verbal, and written communication skills. Ability to communicate with courtesy and diplomacy, efficiently follow written and verbal instructions, provide information, and maintain effective relationships with a diverse group of attorneys, clients, staff, and outside contacts.
Proactive with excellent troubleshooting, problem resolution, and follow-through skills in order to oversee and complete assignments/tasks from inception to completion.
Possess excellent knowledge of reading, writing, grammar, spelling, punctuation, proofreading, and formatting in order to organize and interpret source data, perform administrative functions, prepare relevant documentation, proofread material for grammatical, typographical, and spelling errors, and perform file maintenance.
Ability to perform mathematical calculations and apply mathematical concepts when computing, reconciling balances, verifying numerical data on forms and documents, and preparing expense reports and/or billing.
Ability to occasionally retrieve and distribute files, written documentation, or office supplies weighing up to 10 pounds.
BENEFITS: We offer an outstanding benefit package which includes: medical/dental, 401k with employer contribution; transportation fringe benefit program; back-up care option; generous paid time off policy; and long-term and short-term disability policies.
Katten Muchin Rosenman LLP is an Equal Opportunity Employer/AA-M/F/SO/Disability/Veteran.
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