Job Description
Job Description
Job Description
Our clients seeks a Legal Secretary to support attorneys in the Intellectual Property (IP) and Litigation Departments. The focus of this position will be to support the IP practice, but supporting the Litigation practice as needed is expected.
IP and Litigation Legal Secretary
- 5+ years of experience supporting attorneys in IP (Patents / Trademarks / Litigation).
- Must have experience filing US Patent applications, US Trademark applications and related forms online, and handling all aspects of domestic and international prosecution for patents and trademarks.
Duties & Responsibilities:
- Provide secretarial support to assigned attorney(s), which may include drafting and revising documents, answering phones, scheduling appointments, managing calendars, and/or opening and distributing mail.
- Prepare, revise, and distribute reporting letters, legal documents such as Declaration and Power of Attorney forms and Assignments, correspondence, memos, and reports.
- Handle all aspects of domestic and international patent and trademark prosecution, including review of attorneys’ dockets to ensure proper docketing while maintaining and meeting all due dates.
- Prepare and file (including electronically with USPTO) US Patent Applications, Provisional Applications, Non[1]Provisional Applications, Continuation Applications, Continuation-In-Part Applications, National Stage Applications, and Divisional Applications documents.
- Research patent and trademark information using WIPO and USPTO websites.
- Assist attorneys with patent interference work and inter party proceedings with the USPTO Patent Trial and Appeal Board. Assist attorneys with trademark appeals, oppositions, and cancellation proceedings with the USPTO Trademark Trial and Appeal Board.
- Assist attorneys with monitoring of IP docket for trademark maintenance deadlines and preparation of client advisory and reminder drafts concerning same.
- Prepare and file Preliminary Amendments, Responses to USPTO Office Actions, Notice to Respond to Missing Parts, Assignments, Information Disclosure Statements, and Notice of Allowance documents.
- Prepare and file (including electronically with the USPTO) US and Texas trademark applications as well as responses to office actions, statements of use, declarations of incontestability and renewal applications.
- Download foreign patents and publications as needed to prepare Information Disclosure Statements.
- Maintain a soft docket of due dates that correlates to the daily docket for attorneys.
- Assist with preparation of pleadings for filing and serving (electronically or non-electronically); file and serve documents; prepare hearing and deposition binders and materials; assist with other trial preparation projects, including discovery, hearing, and trial-related tasks.
- Open, maintain, and close matter files
- Record, revise, and submit attorneys’ timesheets in DTE.
- Address billing matters
- Maintain attorneys’ calendars and contact lists as requested, which may include: arranging all aspects of internal and external client meetings and conferences; staying apprised of events or deadlines on calendars; and actively communicating changes or reminders as needed.
- Coordinate all business-related travel arrangements, including submitting all business-related expenses for reimbursement on behalf of the attorneys.
Education & Experience:
- Bachelor’s Degree or Paralegal Certificate required.
- Experience supporting attorneys in commercial litigation strongly preferred.
- Strong skills with document preparation (styles, formatting, etc.), familiarity with docketing databases (CPI), EFS, IPDAS, and document management databases (FileSite/DeskSite).
- Advanced skills in MS Word, Excel, Outlook and PowerPoint.
- Able to work within in a team environment as well as independently.
- Must be available to work overtime when requested and/or needed. Use initiative and creativity to research solutions to, then solve, problems.
- Monday – Friday 8:00am – 5:00pm, with 1 hour lunch. OT required as needed.
Job Tags
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