Job description
- Prepare drafts of patent and trademark applications, filing, formalities, and office action response documents
- Communicate with Firm attorneys and staff regarding patent and trademark application preparation, filing and prosecution matters
- Communicate with inventors and owners clearly and simply regarding: approval and filing of draft patent and trademark applications; proposed responses to office actions; recommendations to file continuation applications and other trademark applications
- File documents through and retrieve information from EFS-Web, PAIR, TESS, TSDR, ePCT, etc.
- Support transfer of IP assets, including gathering and recording necessary assignment documents and importing relevant data and documents
- Coordinate payment or non-payment of issue fees
- Monitor, maintain and clear dockets by coordinating with attorneys and staff to make sure all docket dates are satisfied.
- Generate IP Status reports and various other reports from the docketing database as requested
- Process invoices from prosecution, translation, and other vendors
- Prepare and send demand letters
- Make confident, beneficial recommendations based on knowledge and competence about the patent and trademark processes
- Perform other duties as assigned
Requirements:
- NOT REMOTE - Work in our Tempe, AZ office.
- Positive, professional, courteous, and team-oriented
- Honor the highest ethical standards
- Communicate clearly and thoroughly (written and verbal).
- Strong computer skills, including proficiency with Windows and Microsoft Office Suite applications (Outlook, Word, and Excel).
- Organized self-starter with attention to detail, ability to prioritize tasks and responsibilities to meet deadlines
- Ability to work independently, manage multiple priorities, and work well under pressure in a fast-paced environment with a very high degree of accuracy.
- Eagerly seek constructive feedback
Preferences:
- At least 5 years of patent and trademark filing and prosecution experience
- Experience with international patent and trademark applications and documents, including PCT and Madrid Protocol
- Knowledge of US and foreign patent and trademark prosecution rules and procedures
- Patent docket experience, preferably with CPI
About Us:
- Our high-impact IP strategies.
- Our client-focused collaboration and implementation.
- Our clearly defined budgets are no surprise.
We are:
- Giving Value at Every Interaction.
- Creative Problem Solvers.
- Humbly Awesome.
- Driven and United by Faith in the Future.
- Respectful of a God, Family, & Work Balance.
Probationary employee benefits include health and dental insurance plan options.
About Booth Udall Fuller, PLC:
The law firm of Booth Udall Fuller, PLC is a boutique law firm dedicated exclusively to handling patents, trademarks, copyrights, trade secrets, and licensing. We build successful futures through high-impact comprehensive IP strategies with collaborative implementation based on clear budgets. Headquartered as Intellectual Property Lawyers in Tempe, AZ but helping clients in IP law around the world. We love the work that we do!
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