Please send resume should you be interested in the following IP
Legal Secretary position located in either DC/NYC. This is a
full-time, direct-hire position with a salary between 90-105K
plus OT and awesome benefits. If you’re not interested, please
pass along to your colleagues as we do pay referral fees.
Job Title: IP Legal Secretary
Location: DC/NYC
Salary: 90-105K
OT Eligible: YES
Work Environment: 3 days onsite / 2 days WFH
This position is approximately 80% billing and the other 20% is
light admin work.
5+ years of experience in an administrative position
3+ years of experience in Patent Prosecution.
JOB SUMMARY
Under limited direction, guided by department objectives and
priorities, the IP Secretary must perform a variety of
secretarial tasks to support assigned patent and /or trademark
attorneys and other timekeepers (collectively referred to as
“timekeepers”). A key component of this position is to provide a
high level of internal and external client service and support,
while producing a high volume of consistently excellent work
product. In addition, an IP Secretary must maintain a general
knowledge of the Firm’s patent and/or trademark practice area and
a specialized knowledge of the assigned timekeepers’ practice
area(s) and clients.
ESSENTIAL DUTIES AND RESPONSIBILITIES*
Primary responsibilities of this position include but are not
limited to:
Billing/Expenses:
* Firm financing and effective operations are heavily dependent
upon the IP Secretary’s efforts to ensure that client bills are
accurately produced on a monthly basis. It is also important to
obtain prompt reimbursement for a timekeeper’s business-related
expenses. This includes, but is not limited to, such duties
as:
* Prepare, edit, proofread and/or close daily time entries as
directed by assignments; may help create draft time entries from
calendars and notes.
* Under general direction from partner and accounting personnel,
edit, proof and complete complex clerical procedures relating to
billing for clients; may assist in collection efforts.
* Prepare expense reimbursement documentation for assigned
attorneys/agents for submission to Accounting as appropriate.
* Review foreign associate bills for services rendered and
forwards to the timekeeper for approval. From time-to-time will
assist with reviewing and reconciling statements from foreign
associates.
* Obtain missing time entries from assigned timekeepers.
Administrative Duties:
* IP Secretaries are responsible for ensuring the smooth and
efficient operation of their timekeepers daily schedule.
This includes, but is not limited to, such duties as:
* Calendar due dates, speaking engagements, meetings and
deadlines
* Make appointments and schedule interviews.
* Create and maintain files including, but not limited to, saving
emails and other electronic files.
* Screen and route telephone calls.
* Receive and direct clients and visitors.
* Coordinate travel arrangements with travel agency and firm’s
Travel Coordinator.
* Handle routine client/non-client inquiries with little or no
guidance.
* Perform research as directed.
* Coordinate resources to ensure multiple and complex
tasks/activities are completed as required.
* Provide guidance (i.e., mentoring) for new employees.
* Provide overflow assistance as needed.
Document Preparation:
* In order to provide clients with legal services of the highest
quality, it is essential that IP Secretaries produce accurate,
error-free and properly-formatted documents. This includes, but
is not limited to, such duties as:
* Prepare a variety of correspondence, reports, memoranda, and
legal documents required by the timekeepers to whom assigned from
handwritten notes, transcribing equipment, drafts or oral
instructions.
* Proofread, photocopy, assemble, and distribute prepared
materials as necessary.
* Keyboard, scan and revise a variety of documents.
* Coordinate lengthy document production with Resource Center
personnel
Client Service:
* In order to maintain good client relationships, it is important
for IP Secretaries to provide relevant and timely information to
clients and timekeepers (including times when they are out of the
office) in a professional, courteous and effective manner. This
includes, but is not limited to, such duties as:
* Ensure exemplary client service to all internal and external
clients; proactively promote client service throughout department
and among teams; respond to peer requests with recognition that
the request serves a client or Firm need.
* Proactively communicate with internal and external clients to
ensure that administrative customer service needs are met.
* Regularly review client service procedures and standards in
relation to job position and implement improvements and
enhancements to client service.
Document Management:
* The quick retrieval of information is a key aspect to providing
high-quality legal services. As such, it is important for IP
Secretaries to maintain current and orderly electronic and paper
files according to Firm guidelines. This includes electronic
files in iManage, Outlook and FileTrail.
* Duties include but are not limited to:
* File maintenance
* Preparing requests to open new U.S. or foreign matters,
* Filing official documents and correspondence,
Coordinating Workflow:
* IP Secretaries are responsible for ensuring their timekeeper’s
work is prioritized so that all deadlines are met.
Teamwork:
* IP Secretaries are expected to work together as a team to
support the Firm and meet the needs of its clients. As such,
they are responsible for assisting one another with overflow work
and filling in for each other during absences when necessary.
* IP Secretary Core Duties:
* Submits Conflict Checks
* Prepares Engagement Letters
* Requests new client matter numbers
* Matter specific research / search at USPTO at attorney’s
request
* Monitor and answer any assigned docket items by the close of
business each day
* Invoice processing
Patent Prosecution
* Send search requests to search firm
* Prepare & send PFS results to Client
* Send attorney filing recommendations to client
* Send first draft of application to inventors / client,
including inventor confirmation
* Prepare/ analysis shells (US / foreign)
* Forward draft response to client (US / foreign)
* File responses (US)
* Petition to Expunge Pre-Allowance
* Status Checks & Inquiries
* Terminal Disclaimer(s)
* Petition to Revive – OA response
* RCE with decision to withdraw from petition
* Request for Continuing Examination (depending upon stage of
prosecution)
* Petition to Withdraw (as Counsel)
* Miscellaneous PTO Communications and tasks not covered under
the Patent Prosecution Department (PPD) job description (PPD
Coordinator assigns to appropriate secretary)
* Estimates
* Trademark
* Prepare weekly attorney docket reports
* Gathering evidence from iManage (Certificates of Registration)
at attorney’s request
* Client Spreadsheets (Reports)
* Assisting with Client invoicing
* Client Collections (in coordination with and at the direction
of the Accounting Department)
* Proofreading /Quality Review of primary duties
* Reporting/Communications
US conversion/Foreign Filing reminders
* Restriction Requirements
* Advisory Actions
* Applicant / Examiner-initiated Interview Summary
* Decisions on Petition
* Interview Summaries (not received with OA/NOA)
* Notice of Non-Compliant Amendment
* Ex-Parte Quayle
* Notice of Abandonment
MINIMUM QUALIFICATIONS
* Excellent computer skills with knowledge and ability to work
proficiently with Microsoft Office Suite products, especially
Excel.
* Knowledge of and familiarity with accounting systems, including
time and billing, expenses, conflicts, new matter/new business
intake programs).
* Excellent written and verbal communication skills.
* Attention to detail, accuracy, and thoroughness.
* Ability to maintain confidentiality.
* Detail oriented with ability to handle multiple projects
simultaneously and meet deadlines.
Education:
* High School Diploma or equivalent required. College degree
preferred.
Experience:
* Minimum 3 years of IP secretarial experience in a law firm
supporting billing attorneys.
