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Title : Legal Secretary (Patent Prosecution)

Location : District of Columbia - Washington
Refer to Job # QQGB721471

Legal Secretary (Patent Prosecution) Duties: Assist with the drafting and e-filing of various legal documents in the USPTO related to patent prosecution of utility, plant and design applications including, but not limited to, Office Action amendments and responses, requests for continued examination, continuation and divisional applications, information disclosure statements, supplemental application data sheets, sequence listings, extensions of time, terminal disclaimers, various petitions, notices of appeal, briefs, corrected drawings, assignment recordations, and other documents as required. Maintain knowledge of specific client requirements and needs for filing and reporting of documents, including use of various client extranets and secure data sites, assist in reviewing a docket for multiple clients in multiple offices and assist in managing work flow. Prepare monthly agendas for clients for attorney review based on multi-month docket, and draft/ shell letters based in a content responsive fashion. Review and maintain docket calendars for multiple attorneys and coordinate with docketing personnel to insure accuracy of the docket and compliance with due dates. Maintain file integrity and insure completeness of electronic and paper files. Calculate USPTO fees based on type of filing, e.g., application filing fees, additional claims, extensions of time, petition fees, etc. Prepare conflict checks and new matter forms. Prepare draft engagement letters for attorney review ensuring appropriate attachments are included. Reconcile attorney expenses, schedule travel, meetings and other appointments. Assist in coordination, production and submission of client invoices. Serve as a back-up to team members as required. Qualifications: High School Diploma or GED required; College degree or Legal Assistant Certification a plus. 5+ years of relevant work experience in a patent prosecution practice in either a business or law firm environment. Experience in a law firm setting desirable. Experienced with USPTO systems such as EFS, EPAS, PAIR and Financial Manager. IPDAS experience a plus. Must be able to shellA? both PCT and U.S. utility/provisional applications. Broad knowledge, experience and understanding of patent policies, procedures and electronic filing processes with the U.S. Patent and Trademark Office (USPTO). Detail oriented with strong organizational, written and oral communication skills, with the ability to work both independently and collaboratively in a fast-paced environment to manage multiple tasks to meet strict deadlines. Familiarity with global patent filing and reporting issues. Must have working knowledge and experience with Computer Packages, Inc. (CPI) docketing system and Intellectual Property Document Assembly System (IPDAS), USPTO e-filing system (EFS), PAIR, EPAS, USPTO Financial Manager. Must have basic understanding of 37 C.F.R. and the Manual on Patent Examining Procedures (MPEP). Must be able to prioritize and produce a high-quality work product to meet deadlines and perform job responsibilities under pressure efficiently, productively and in a professional manner. Familiarity with bio and life sciences terminology and solid proofreading skills with an understanding of the need to produce an error-free work product. Familiarity with handling and filing sequence listings and declarations. Strong knowledge of MS Office Suite (Word, PowerPoint, Excel) with advanced knowledge of Outlook. Strong written and verbal communication skills. Knowledge of technical terms and/or formulas involving various technologies a plus. Ability to multi-task, while remaining highly organized and detail oriented. Ability to work independently and collaboratively with others. Possess excellent organizational skills and high attention to detail of assignment in order to meet deadlines. Ability to see details at close range and/or on a computer screen. Ability to listen to and understand information and ideas. Possess excellent time-management skills. Ability to use office equipment; (i.e. fax machines, copier machines, scanners). Able to manage contacts through available technical resources. Ability to handle confidential matters. Flexible and dependable, including the ability to work overtime as needed. At all times, be professional and a team player. Adaptable to change, open to new ideas, open to taking on new responsibilities and can adjust plans to meet changing needs. Respectful of people s differences in background, culture and perspective. Able to quickly grasp the goals, service, culture and strategy of both the department and the firm overall.

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