Manager, IP Service Operations
ClarivateAbout the role
As the Manager of IP Service Operations, you will be responsible for ensuring filing, prosecution, docketing support services are delivered in line with customer expectations. This position requires a leader and an IP subject-matter expert with the primary goal of maintaining the accuracy and integrity of our clients’ patent and trademark management portfolio.
You will support the broader IP Admin strategy through implementation of policy and interpretation of strategic aims inside tactical decision making.
About you – experience, education, skills, and accomplishments
- Bachelor’s degree in business, legal, or other related field, or equivalent combination of education and/or experience
- Experience with patent and trademark management software (Memotech, Foundation IP, The IP Management System, Inprotech, or IPFolio)
It would be great if you also had…
- Minimum of five (5) years of leadership experience managing a team
- Experience with legal technology, including time, matter management and billing software
- 5+ years of recent and comprehensive U.S. and/or foreign patent and trademark filing & prosecution experience. U.S. and foreign patent and/or trademark docketing experience is preferred.
What will you be doing in this role?
- Lead team to meet the organization's expectations for productivity, quality, continuous improvement, and goal accomplishment against SLA TAT% and Lead Time
- Empower employees to take responsibility for their jobs and goals. Delegate responsibility and expect accountability and regular feedback
- Monitor incoming communications received from outside counsel, foreign agents, USPTO and other patent and trademark offices to ensure timely review and processing.
- Routinely review and file basic to intermediate complex prosecution related documents with the USPTO for all stages of prosecution. Also coordinate and facilitate timely instructions to foreign agents in order to meet deadlines for non-US patent or trademark prosecution deadlines.
- Prepare basic to intermediate complex patent documents and/or trademark registrations, including classes and specimens, for client execution and file same at the USPTO, including declarations, assignments, powers of attorney, etc., and electronically file (EFS) documents at the USPTO, including applications, amendments, assignments, responses, petitions, information disclosure statements, issue fees.
- Open new matters in our clients’ patent and trademark management software and update all related matter details, de-docket relevant dates in docketing database, and ensure that any discrepancies in docket dates and responses are correctly resolved.
- Review and docket a large volume of e-mail, mailings, correspondence, and pleadings related to patent and trademark matters from the United States Patent and Trademark Office, clients, foreign counsel, and other foreign patent and trademark offices. De-docket relevant dates in docketing database; forecast and enter next action. Ensure that any discrepancies in dates and responses are appropriately resolved and corrected.
- Review Official Filing Receipts, Notices of Recordation of Assignment, Notices of Allowance, Issue Notifications, etc. for accuracy. Prepare reporting letters to clients. If required, prepares a request for correction, when applicable.
- Prepare and forward reporting letters to clients regarding Office Actions and other USPTO communications, such as Notices to File Missing Parts, trademark oppositions and related notices. Also, prepare and forward reporting letters to clients regarding USPTO filings, communications to and from foreign patent associates for U.S. National Phase applications, etc.
- Prepare and forward reminders to clients regarding due dates and instructions including but not limited to, forward Letters Patent to the client and file Fee Address Indication forms for the annuity service provider selected by the client.
- Review application papers being filed in the USPTO for accuracy and completeness regarding inventors, assignees, priority data, etc. Order and review drawings for accuracy and completeness prior to submission to the USPTO.
- Thoroughly review all work product to ensure highest accuracy; routinely apply techniques and procedures to manage details, often working under critical and competing deadlines.
- Act as a resource, providing filing and prosecution guidance, training, and expertise. Regularly and effectively communicate filing standards, protocols, and procedures to ensure understanding and compliance. Assist with maintaining processes, tasks and special projects as assigned.
About the Team
This position will report to the IP Admin Director and work with other talented IP support specialists, all of whom share a passion for customer service and
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