IP Admin Senior Analyst (Trademark Docketing)

We are looking for an IP Admin Senior Analyst to join our team at Clarivate. In this role, you will be providing support to our clients by processing correspondences issued by the United States Patent & Trademark Office, patent offices worldwide, and the filing documents submitted during the Trademark life cycle. You will be reviewing, docketing, and de-docketing information received from PTOs, law firms, agents, and clients using our IP management system and routing the information to the appropriate attorneys or paralegals for action. If you have a passion for IP, trademark administrative work, and providing client support, we want to talk to you!

About you - experience, education, skills, and accomplishments

• 2+ combined experience in Trademark Docketing and/or Paralegal services

• 2+ years of experience working with Intellectual Property law and regulations

• Associate's Degree in a related field or equivalent relevant work experience

• Experience using an IP Management Solution

It would be great if you also had...

• Bachelor's degree in a related field

• 5+ years of experience working in a Trademark docketing role

What you will be doing in this role?

• Assisting counsels on prosecution of Trademark/Design applications/registrations before the local/international IPOs or responsible authorities directly or through the outside counsels

• Conveying and drafting instructions to foreign counsel related to Trademark/Design matters; supervising outside counsel to assure deadlines are met

• Maintenance of internal database; Creating portfolio status charts; creating Trademark/Design portfolio reports

• Creating summaries and periodic status reports of Trademark/Design matters for clients; Upgrading on procedures and modifications in applicable laws plus regulations in International IP offices; Issuing invoices and reviewing outside counsel invoices for accuracy

• Docketing: calendaring the statutory & non-statutory deadlines in Intellectual Property Management System (IPMS) along with relevant documents to preserve IP rights.

• De-docketing: perform or close the calendared events in IPMS once the requisite action is completed or cancelled respectively.

• Prioritize daily docketing/de-docketing requests and other allocated tasks as agreed with client to complete in each day to keep IPMS current and correct.

• Review patent & trademarks prosecution related documents (US & Non-US) received via mail or shared site and update/create the records in IPMS as per the standard operating procedures (SOP).

• Effective communication with Attorneys, Paralegals, Law firms, Foreign agents, and other stake holders to seek instructions and clarification on certain tasks.

• Create and update patent & trademarks records in IPMS along with family linking of direct and subject matter related (SMR) applications.

• Maintain the data integrity of IPMS and proactively monitoring the docket to ensure that all PTO & client deadlines are met

• Facilitate timely filing of all patent and trademarks application & office action response through order letters and other required instructions.

• Facilitate accurate and timely payment of all PTO fees including the maintenance fees, coordinate with client for payment instructions and coordinate with annuity service providers or law firms

• Provide training to new joiners, conducting refresher trainings

• Perform internal and PTO Audits as needed

About the Team

Come join our Filing & Prosecution Team! Clarivate is the global leader in Intellectual Property software and tech-enabled services, serving over 12,000 law firm and corporate customers every day. Our commitment is to give IP professionals the information, insight and technology they need to manage the world's ideas. We have the insight, experience and global expertise to create, protect, maintain and maximize IP assets on a global scale.

Hours of Work

• Full Time, permanent position

• This is a hybrid role working 2-3 days a week in one of our US Clarivate offices

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Clarivate is an Equal Opportunity Employer Vets/Minorities/Women/Disabled