IP/Trademark Docketing Specialist

Nixon Peabody LLP
San Francisco, CA Remote Full Time
POSTED ON 5/7/2024

The IP/Trademark Docketing Specialist provides essential and specialized client and attorney support relating to docketing all phases of domestic and foreign patent and trademark prosecution. This position requires current familiarity with docketing procedures, software, and best practices. A hybrid work schedule is available for this position.

A career at Nixon Peabody is the opportunity to do work that matters. It’s the chance to use your knowledge to shape what’s ahead. To share, to innovate, to learn at a firm that taps the power of collective thinking.

We’ve created a dynamic, energizing environment that promotes success for our clients and each other. We offer fast growth, connectedness and training in business as well as law. And our rigorous standards assure you are part of a diverse team of top talent at every turn.

If you’re someone who’s looking toward the future, we’d love to hear from you.

Location: Boston, MA; Chicago, IL; Los Angeles, CA; San Francisco, CA; Washington, DC

  • Docket new patent and trademark application filings, incoming office actions, and correspondence (USPTO, PCT, and Foreign Associate)
  • Ensure accurate entry and date calculation for docket entries.
  • Run docket reports for patent and trademark cases daily and at other specified intervals.
  • Clear the docket daily, including sending reminders as needed.
  • Advise attorneys of issues relevant to clearing the docket, and re-docket actions as needed.
  • Assist in quality assurance review for patent and trademark filings by noting and referring to any errors or omissions observed during the normal course of docketing duties.
  • Prepare docket status reports for clients and attorneys.
  • Assist with verifying the status of patent and trademark applications with the US and worldwide Patent and Trademark databases (e.g., searches, status checks, electronic filing of patent applications and responses) and updating.
  • Validating the integrity of NetDocs files in conjunction with processing communications and docket requests.
  • Assist with patent and trademark file transfers (inbound and outbound)
  • May require travel to other firm offices for client/team needs, training, meetings, etc.
  • Other duties as assigned.

To perform this job successfully, you must be able to perform each essential job responsibility listed above, satisfactorily, with or without reasonable accommodation. Nixon Peabody retains the right to change or assign other duties to this position. The requirements listed below are representative of the skills and abilities required.

Job Requirements:

  • 3-5 years of IP experience, preferably within a law firm or professional services environment.
  • High School Diploma or equivalent required. College Degree preferred.
  • Working knowledge of US and foreign patent and trademark prosecution procedures, including statutory and filing deadlines.
  • Exceptional attention to detail.
  • Proficiency in industry-standard patent and trademark docketing software products – NetDocuments, PattsyWave, Aderant, Outlook
  • Solid working knowledge of docketing procedures
  • Excellent customer service, communication, computer, and database skills
  • Ability to manage multiple projects with competing priorities.
  • Ability to work with individuals at all organizational levels and to influence and negotiate upward within an organization.
  • Ability to work overtime as needed.
  • Ability to travel as needed.

In accordance with applicable Federal and State laws, the anticipated annual salary range for this position, depending on location, is as follows:

  • Chicago, IL: $65,266 to $94,672
  • Washington, DC: $68,104 to $98,788
  • Boston, MA: $68,104 to $98,788
  • Los Angeles, CA: $68,104 to $98,788
  • San Francisco, CA: $70,942 to $102,904

In addition to a standard benefits package, this role may be eligible for additional contingent compensation based on an array of factors, including but not limited to: work performance, geographic location, work experience, education, and qualifications. Because such contingent compensation is not yet calculable or may be zero ($0) in some circumstances, the above-listed salary range(s) are Nixon Peabody’s good faith estimate of the annual salary(ies) it reasonably expects to pay for the position at the time of this posting.

Nixon Peabody LLP is an Equal Opportunity / Affirmative Action Employer: Disability / Female / Gender Identity / Minority / Sexual Orientation / Veteran. Pursuant to the San Francisco Fair Chance Ordinance and the Los Angeles Fair Chance Initiative, we will consider for employment qualified applicants with arrest and conviction records.

To comply with Federal law, Nixon Peabody participates in E-Verify. All newly-hired employees are verified through this electronic system established by the Department of Homeland Security (DHS) and the Social Security Administration (SSA) to confirm their identity and employment eligibility. Please refer to the Notice of E-Verify Participation and the Right to Work posters on the Nixon Peabody Careers page for more information.

Job Type: Full-time

Benefits:

  • 401(k)
  • Dental insurance
  • Health insurance
  • Life insurance
  • Paid time off
  • Vision insurance

Schedule:

  • Monday to Friday

People with a criminal record are encouraged to apply

Work Location: Hybrid remote in San Francisco, CA 94111

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