Specialist, IP Docketing

6 days ago

Old Toronto, Canada ISTITUTO MARANGONI Full time
*

Firm Summary

White & Case is an elite global law firm serving leading companies, financial institutions and governments worldwide. Our long history as an international firm means we are perfectly placed to help our clients resolve their most complex legal challenges wherever they may be. With lawyers operating from more than 40 locations, working in virtually every country of the world, we have invested heavily in building a high-quality full-service practice competing at the top of the market. We are distinguished by our on-the-ground presence in the world’s key financial markets and our strengths in handling complex cross-border work. It’s not just about our global network of offices; it’s the global interconnectedness of the Firm that our people, and our clients, value most. We work well together across geographic and practice boundaries. It’s one of the reasons we attract and retain cross-border work. And why we attract a diverse group of people. Our lawyers are globally minded, enterprising, collaborative and committed to excellence. Diversity is a core value of our Firm and it has been recognized with numerous awards and top rankings around the world. Our people represent 90 nationalities and speak 80 languages.

Position Summary

As the leader of a tight-knit IP Docketing team, you should be flexible in your approach, keen to cultivate a collaborative environment and thrive in a fast-paced and stimulating working environment. In addition to performing docketing responsibilities, this senior role supervises and trains junior team members on the IP Docket team. Although primarily focused on day-to-day operational matters, you will also work across a wide range of projects. You can anticipate unforeseen challenges and will be both resilient and pragmatic in your approach to managing change. This role requires meticulous attention to detail, strong organizational skills, and the ability to lead and mentor a team. Supporting our IP Partners, Technical Advisors, and Legal Assistants, you will develop a good understanding of our IP Practice.

Duties and Accountabilities1

  • Oversee the entire IP docketing process, ensuring all work is properly distributed to each team member and completed accurately within a timely manner and pursuant to department’s established procedures
  • Review and process all incoming US and Foreign filing mail for deadlines and office actions
  • Ensure all docketed deadlines and dates are accurate and reported out to the case team
  • Update entries pursuant to correspondence from the case team
  • Assist in quality assurance review by noting and referring to any errors, discrepancies, or omissions observed during the normal course of docketing duties
  • Ability to identify critical information from mailings and correspondence and convey that information within docket descriptions
  • Create and generate customized reports for attorneys, staff, and clients, including, but not limited to docketing reports, month-end reports, and status reports for Provisional and PCT filings
  • Process new matter requests and matter description revisions
  • Coordinate incoming and outgoing file transfers in connection with new clients, attorney hires, attorney departures, or change in counsel
  • Monitor and report on the status of disengagements
  • Provide in-depth, detailed, and analytical guidance and insight to the IP case team related to docketing issues and questions
  • Meet regularly with IP case team members to discuss patent docket standards, protocols, and procedures to ensure understanding and compliance
  • Remain current in industry trends in patent docketing; proactively expand knowledge of procedures, laws, and nuances related to IP docketing
  • Assist with the regular review and assessment of docketing procedures; propose and implement updates to improve procedures and reduce risk
  • Lead in the enhancement, integrity, and maintenance of the patent database
  • Manage and mentor junior IP docket clerks, providing guidance, training, and support to ensure high-quality performance and professional development
  • Conduct regular performance reviews and provide constructive feedback to junior team members
  • Interview and provide input into the hiring decisions of junior IP Docket Clerks
  • Routinely meet with Managing Clerk and Managing Attorney to discuss workflow, troubleshoot ongoing issues, and streamline procedures
  • Assist in special docketing projects involving docket functionalities that require docket expertise, historical knowledge, etc.
  • Address and resolve issues relating to the software, including, but not limited to FoundationIP and iManage databases

Qualifications

  • 8+ years’ substantive IP Docketing experience (preferably on Clarivate’s FoundationIP)
  • Supervisory experience required
  • Comprehensive knowledge of US and Foreign patent prosecution lifecycles, including deadlines, rules, and procedures
  • Detail-oriented with good analytical and critical thinking skills; ability to work independently, as well as part of a team
  • Ability to work outside of regular business hours as needed
  • Strong organizational and time management skills
  • Ability to stay calm under pressure when juggling multiple tasks
  • Driven by professional growth
  • Strong professional presence
  • Client service focus
  • Exercise sound judgment and know when to escalate issues
  • Pro-active, resourceful and takes initiative
  • Fluency in English

Location and Reporting

  • This is a hybrid in-office/remote role which can be based in our New York, Washington, D.C., or Boston office.
  • This role reports to the Managing Clerk and Managing Attorney, and works closely with the IP Global Chair.

Equal Opportunities

White & Case is an Equal Employment Opportunity (EEO) employer and is committed to creating a diverse and inclusive workplace. It is our Firm’s policy to recruit, employ, train, compensate and promote without regard to race, color, religion, creed, national origin, age, gender, sexual orientation, marital status, military or veteran status, disability, genetic information, or any other category protected by applicable law.

Applicants who are interested in applying for a position and require an accommodation during the process should contact talent.acquisition@whitecase.com.

Benefits at White & Case

White & Case LLP offers a comprehensive suite of benefit programs to all eligible employees, including medical, dental, and vision insurance, life and disability coverage, 401(k) retirement savings, vacation time, and leave programs (including parental leave). Exempt roles are also performance bonus eligible.

The Firm may modify and amend this job description at any time at its sole discretion. Nothing herein creates a contract of employment or otherwise modifies the at-will nature of employment.

1The above is a general description of the essential duties associated with this position and does not represent an exhaustive or comprehensive list of all duties.

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