Goleta, CA, USA
13 days ago
IP Docketing Specialist & Legal Admin
Johnson Service Group, a nationally award-winning staffing firm, is looking to hire an IP Docketing Specialist & Legal Admin for a global medical device company.

3-month Contract | Hybrid | Pay range for this position is $55 - $70/Hr.   based on skills, education, experience, and other relevant qualifications.

Summary:
The Intellectual Property (IP) Docketing Specialist & Legal Administrator will maintain and update the IP Management System (IPMS) with all relevant foreign and domestic deadlines and filing dates for patents, trademarks, copyrights and other IP-related matters (IP Docketing Activities) and upload the documents related thereto to the IPMS; prepare, and/or support preparation of, administrative forms and paperwork associated with IP-related matters; track and monitor all upcoming docketed IP deadlines, ensuring timely fulfillment of deadlines and submission of required documents; maintain up to date IP matter e-files; facilitate compliance with all relevant laws, regulations, and procedures related to IP Docketing Activities; generate IP matter docket reports and review with responsible IP attorneys, agents, and paraprofessionals (IP Professionals) to ensure timely fulfillment of relevant deadlines; and provide administrative support to IP Professionals, including preparing and submitting expense reports, scheduling travel, arranging meetings, and managing calendars.

Duties and Responsibilities: Proactively manage, anticipate, and act upon foreign and domestic office actions and filing deadlines for patent and/or trademark cases, inclusive of all aspects of the patent and/or trademark lifecycle, e.g.,timely fulfillment of prosecution and filing deadlines; coordination and management of the preparation and submission of Information Disclosure Statements; fulfillment of the IP filing formality requirements; creation and maintenance of IP records in the IPMS including the associated e-file; and facilitation of decision workflows, including suggested updates to improve efficiency and/or ways of working. Proactively engage with internal and external IP Professionals globally to ensure seamless filing, prosecution, and maintenance of patent and trademark applications, as well as identify opportunities to evolve IP departmental best practices. Facilitate and drive ways of working alignment with the Global IP Team and contribute to and maintain US IP Teams ways of working manual. Lead and/or support IP projects, inclusive of managing key stakeholders, developing task lists and/or action plans,  coordinating resources, and helping drive and progress effective implementation of project deliverables. Deep knowledge and understanding of rules and regulations governing IP practice area; ability to anticipate and assess impact of IP rule and regulation changes on departmental and business unit strategies, policies, and processes and confidence to advocate for appropriate response thereto and/or modification thereof. Anticipate and research complex fact patterns, drive troubleshooting investigations, actively problem-solve, and produce consistent and reliable work product within and across IP Legal team working groups. Integrate openly and well with peers and assigned business units; actively communicate and/or raise barriers or unmet support needs; understand unique goals, needs, and challenges of the global IP Legal department and IP Professionals. Ability to work independently with minimal oversite, including proactively prioritizing tasks and timely fulfillment of same as well as timely and effectively communicate and collaborate with the Global IP Team and key stakeholders to meet deadlines and fulfill tasks.     Possess strong organizational and written and verbal skills to facilitate effective interactions with legal colleagues, inventors, business clients, domestic and international law firms, vendors, and other external parties. Confidence to independently and proactively identify and engage resources required to fulfill core responsibilities. Provide administrative support to US IP Professional, inclusive of managing and submitting expense reports, managing calendars, planning and scheduling meetings, and booking travel. Will spend part of his/her time as a member of continuous improvement teams undertaking projects and seeking ways to improve the quality of products and services Education and Experience Requirements: Associates or Bachelors degree or comparable on the job training Minimum of 10 years experience as a docketing specialist (emphasis on foreign docketing) in intellectual property law, with a track record of increasing responsibility Experience with electronic filing systems of the USPTO, WIPO, and other global IP offices German language skills are a plus Proficient in IP law and procedures, with strong understanding of USPTO, Madrid Protocol, and WIPO rules, deadlines, benefits, and procedural requirements Excellent organizational skills with ability to manage multiple priorities and maintain attention to detail in a fast-paced environment Strong communication skills (both written and verbal), capable of effectively interacting with members of the global legal and IP teams, stakeholders in the business, vendors, and external agents, and the ability to work collaboratively Proficient in IP management software and databases, as well as Microsoft Office Suite. Understand docketing best practices and protection of Intellectual Property Rights Experience coordinating execution and procurement of formality documents, such as certified priority documents and assignments and powers of attorney, including obtaining required signatures, notarizations, apostilles, and/or legalizations Experience with electronic research tools and patent prosecution filing systems, including experience electronically filing US, PCT and/or foreign patent applications, office action responses, inventor declarations and assignments and/or the equivalent in trademark practice Becoming an IPMS super user and training others as needed #D800

JSG offers medical, dental, vision, life insurance options, short-term disability, 401(k), weekly pay, and more. Johnson Service Group (JSG) is an Equal Opportunity Employer. JSG provides equal employment opportunities to all applicants and employees without regard to race, color, religion, sex, age, sexual orientation, gender identity, national origin, disability, marital status, protected veteran status, or any other characteristic protected by law.
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