Patent Legal Secretary

We have an exciting opportunity for a Patent Legal Secretary at Eversheds Sutherland (US) LLP. We are searching for someone who wants to be a valued contributor and member of a talented and dynamic team of lawyers, paralegals and staff.

The Legal Secretary is responsible to the individual attorney(s) and paralegal(s) to whom assigned for specific, day-to-day responsibilities and duties and to the Human Resources Manager for Firm policies and procedures, Practice Group assistance, overflow work, and overtime work.

The Legal Secretary should have previous work experience including basic secretarial skills, word processing, general office procedures and filing techniques, along with the ability to concentrate on details, organize work and work with a wide spectrum of individuals. The Legal Secretary must be able to handle diverse practices, be a team player, and be a liaison between the client and the attorney. The ability to communicate accurately and professionally with clients is a must. In addition, it is essential that the Legal Secretary have strong proofreading skills, organizational skills and solid attention to detail.

Responsibilities and Duties:

I. Administrative and Clerical Duties

• Drafts, edits, and files court documents and related correspondence.
• Handles time entry and billing for assigned attorney(s) and paralegal(s).
• Resolves billing disputes between client and Accounting.
• Prepares cover letter for invoices.
• Processes new client information in Client Information Management System.
• Maintains files on a regular basis as required by attorney(s), Practice Group, and Firm procedures.
• Sends files and records off-site when and if appropriate.
• Maintains and updates attorney(s) calendar; enter contacts into InterAction on behalf of attorney(s).
• Coordinates travel arrangements and processes expense reports.
• Coordinates in-house meetings and assists as necessary.
• Opens mail and date stamps, when appropriate.
• Answers and handles all incoming phone calls in a professional manner.
• RSVP attorney(s) for seminars and conferences.
• Maintains open communication with attorney(s) at all times.

II. Prosecution Specific Duties

• Assists attorney(s) and paralegal(s) with preparation and prosecution of patent, trademark and copyright applications.
• Reports the Notice of Assignment Recordation to the client.
• Calendars docket non-provisional and foreign filing due dates; send reminder letters regarding upcoming non-provisional and foreign filing due dates.
• Prepares transmittal documents, including Application Data Sheet (ADS), Transmittal letters and fee transmittals.
• Prepares declaration documents, power of attorney and assignment documents.
• Maintains and organizes USPTO/client correspondence.
• Tracks patents/applications in PAIR at attorney request.
• E-file applications via EFS-web.
• Prepares IDS (Information Disclosure Statement) based on the background of the invention.
• Prepares IDS based on any search reports in a related PCT application.
• Prepares filing receipt reporting letter.
• Calendars docket due dates for response to Election/Restriction Requirement and Office Actions, as requested by attorney.
• Prepares shell documents for the Response to the Election/Restriction requirement, Office Actions, foreign correspondence to respond to Office Actions; prepares any extensions of time when responding to an Election/Restriction Requirement.
• Prepares draft letters reporting Office Action when received for attorney review and revision.
• Prepares shell documents for the Response to the Office Action.
• Prepares Notice of Appeals, when warranted and Appeal Brief Shells.
• Prepares draft letters reporting Notice of Allowance and Issue Fee due for attorney review and revision; prepare issue fee for payment.
• Prepares draft letters reporting Issued Letters Patent.
• Proofreads all correspondences, patent cover pages and claims.
• Obtains file histories of issued patents or published applications via PAIR.

Knowledge, Skills and Abilities:

• A Bachelor’s Degree is required.
• A minimum of 5 years of patent prosecution secretarial or administrative experience is required. Large law firm experience is preferred.
• Excellent interpersonal, written and verbal communication skills are required. Proven analytical and problem-solving skills. Detail-oriented, organized and have strong ability to multi-task, prioritize deadlines and workload. Ability to present ideas in a business-friendly and user-friendly language.
• Proficiency with Microsoft Office (Word, Excel, PowerPoint, Outlook), Adobe Acrobat, FileSite or other document management software, Aderant or other billing software. Proficient in Visio is highly desirable.

Eversheds Sutherland (US) LLP is committed to promoting diversity and inclusion within our Firm and in the larger legal profession. We believe that diverse skills, knowledge and viewpoints make us a stronger firm. Eversheds Sutherland (US) LLP maintains a policy of affording all employees and applicants equal employment opportunities without regard to actual or perceived race, color, religion, sex (including pregnancy, childbirth, lactation and related medical conditions), sexual orientation, gender (including gender identity or expression or transgender status), national origin, age, disability, genetic information, marital or familial status, domestic violence victim status, ancestry, amnesty, citizenship status, ethnicity, military and veteran status, or any other characteristic protected by applicable law. Unlawful discrimination, harassment and retaliation will not be tolerated in any of the Firm’s offices or any other work-related setting. Qualified individuals with a disability may request a reasonable accommodation in order to apply for a position or to enable them to perform the essential functions of a position for which they are otherwise qualified. EEO.