Patent Transfer Coordinator

Job Description Summary:

Fenwick is seeking a Patent Transfer Coordinator who will be responsible for reviewing and processing patent matters ensuring compliance with the Patent File Transfer procedures. The coordinator will perform file audits to assess the current prosecution status, review upcoming due dates, and prepare/file patent formalities and all other prosecution documents for incoming and outgoing transfer files.
This role can be based in any of our U.S. offices and offers a hybrid work arrangement, allowing you to work both from home and in the office. The frequency of in-office work will be determined by business needs and guided by your department's directives. The work schedule for this position (non-exempt) will be 37.5 hours per week, Monday - Friday, from 9:00 am - 5:30 pm, with flexibility and ability to work overtime, as needed.

Job Description:

• Maintain a Patent File Transfer Tracking System.
• Follow firm guidelines in transferring-in and transferring-out patent prosecution files.
• Audit newly received patent files for current status, upcoming due dates and next action due.
• Audit files to be transferred-out of the firm, including review of pending due dates and communicate to new counsel.
• Prepare conflicts and new matter requests for transfer-in files.
• Research and correct chain of title information to obtain power of attorney documents for transfer-in files.
• Correspond with client and or foreign counsel as needed to obtain missing file documents, official correspondence or assignment information for transfer-in files.
• Prepare and file assignment documents, revocation and power of attorney documents, and application data sheets for transfer-in files.
• Prepare and file withdrawal of power of attorney documents, for transfer-out files (as needed).
• Monitor docket as needed to complete file transfer actions timely.
• Coordinate with the billing specialist, a final check of outstanding WIP and AR.
• Update client specific customer numbers when applicable.
• Purge files being transferred out of the firm and coordinate transfer with the Information Governance team.
• Forward transfer correspondence to new counsel for transfer-out files.
• Keep the attorneys and client teams apprised of new developments with all file transfers.
• Perform other duties as assigned.

Desired Skills and Qualifications:

• Proficiency in navigating some or all of the following PTO platforms: Patent Center, Assignment Center, and WIPO.
• Working knowledge of US and Foreign patent rules and practices.
• Experience in preparing patent formalities for filing in the US Patent & Trademark Office (USPTO).
• Excellent researching skills with proficient experience in researching US and Non-US patent office websites.
• Proficient knowledge of Excel and IP docketing database programs.
• Accurate data entry skills, proven organizational abilities, and strong attention to detail.
• Proficient knowledge and usage of document management system.
• Multitask in a highly demanding, deadline-driven environment.
• Possess a high level of attention to detail.
• Take initiative and work both independently and in a team environment.
• Ability to proofread typed material for grammatical, typographical and spelling errors.
• Ability to type standard correspondence, memoranda and similar material in draft or final form from written material or dictation.
• Exemplary client service skills, with the ability to interact with various departments, all levels of firm executive personnel, vendors and contractors.
• Excellent written, verbal and organizational skills.
• Maintain and handle confidential and sensitive information with discretion.
• Promote effective work practices, work as a team member, and show respect for all firm personnel.
• Proficiency in MS Office applications.

Reporting to the Patent Client Services Manager, the ideal candidate will have a minimum of four (4) years of relevant patent prosecution and/or U.S. docketing work experience.  Experience in a law firm setting is preferred. 

Benefits and Compensation Details:

At Fenwick, we believe that our partners and employees are our most important asset. Helping you and your families achieve and maintain good health - physical, emotional, and financial - is the reason we offer a comprehensive benefit program. We provide benefits to eligible employees under plans such as Healthcare, Life Insurance, Health Savings Accounts, Flexible Spending Accounts, and Wellbeing.

The anticipated range for this position is:

$84,000 - $120,000

Depending on the role, the actual base salary offered may depend upon a variety of factors, including without limitation, the qualifications of the individual applicant for the position, years of relevant experience, level of education attained, certifications or other professional licenses held, and if applicable, the location in which the applicant lives and/or from which they will be performing the job.

A discretionary bonus for eligible employees may also be available based on performance.  Additional information about employee eligibility for benefits and discretionary bonus will be made available upon request.