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The IP Coordinator is responsible for supporting primarily the busy, fast-paced Boston IP practice including the coordination, tracking, intake and management of new and existing client matters, as well as outgoing client transfers. This includes collaborating with other firm functions to effectuate timely execution and/or tracking of new IP client intake, new IP matter creation, conflicts clearance initiation, new matter docket entry, integration of records into the firm\xe2\x80\x99s document management system and billing systems, and adherence to client specific IP requirements.

In addition, this position may be responsible for supporting all aspects of patent prosecution for select clients, with particular emphasis on tracking and coordinating fulfillment of all deadlines (foreign and domestic). Other responsibilities include a variety of IP-related projects and administrative tasks. This position requires proactively completing tasks and following through with the speedy resolution of issues with minimal supervision, including the ability to meet deadlines under very tight time constraints, attention to detail, and other demands.

This is a billable position requiring accurate and timely submission of matter attributable billable hours.


JOB DESCRIPTION

IP PRACTICE SUPPORT

• Work with firm ethics and conflicts functions to open new clients and new matters, collaborate with other firm functions to timely opening of client and matter workspaces, docket and billing files
• Work with other firm functions to ensure client specific IP requirements are met, including entering matters, estimates and matter status into firm and/or client databases and frequently updating
• Work with billing function to ensure timely billing and compliance with client invoicing requirements including alternative fee arrangements
• Maintain tracking documents for client portfolios to indicate priority and subject-matter related applications, including monitoring pending claims across global patent portfolios and coordinating cross-citing of prior art references.
• Assist with researching and responding to inquiries from clients relating to billing, budget tracking, estimates and matter status
• Review and submission of IP-related third-party invoices for payment and USPTO deposit account fees.
• Communicate frequently, in writing and orally, with IP legal team and other firm functions.
• Other duties and projects as assigned.

IP PROJECT MANAGEMENT

• Prepare and provide IP Partners and practice support management periodic status reports on the outstanding issues and projects this position handles that are critical to the smooth functioning of the IP Group including all aspects associated with new matter intake and IP prosecution.
• Act as an advocate for the IP team this position supports by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
• Assist with IP and firm practice systems reviews and updates.

PATENT PROSECUTION

• Responsible for daily tracking and clearance of patent prosecution docket, both foreign and domestic matters, for assigned clients. Including, insuring all statutory and non-statutory deadlines are met without fail and provide timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
• Prepare and file patent prosecution documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, information disclosure statements, declarations, statements of use and extensions in compliance with USPTO guidelines and reporting filings to clients.
• Prepare formal documents for review, including declarations, powers of attorney, and assignments, for execution by the applicant or inventor.
• Coordinate filing of sequence listings and formal drawings prepared by outside vendors.
• Confirm the status of patent and trademark cases with the U.S. Patent and Trademark Office.
• Review face and claims of Letters Patent for accuracy.
• Prepare responses to notices (missing parts, office actions, disclosure statements, etc.).
• Prepare Notice of Allowance checklists for attorney review.
• Prepare and file Information Disclosure Statements, maintain prior art reference spreadsheets and tracking documents.

FIRM KNOWLEDGE

• All members of the firm are encouraged to participate in our Global Citizenship program.
• Demonstrate knowledge of the firm\xe2\x80\x99s culture, practices, business, and structure.
• Demonstrate knowledge and adherence to basic firm policies, procedures, and processes.

QUALIFICATIONS

REQUIRED SKILLS

• Must be a self-starter, proactive, and take initiative beyond routine responsibility.
• Ability to follow through on projects and tasks with minimal supervision.
• Ability to meet deadlines under very tight time constraints.
• Strong interpersonal skills.
• Excellent written and verbal communication skills.
• Flexible attitude and the ability to deal well with changing assignments and priorities.
• Ability to multi-task.

EDUCATION, CERTIFICATIONS AND/OR EXPERIENCE

• Five (5)+ years of patent prosecution support experience preferred.
• Experience with prosecution of biotechnology and pharmaceutical sector portfolios desirable.
• Billing experience, including electronic billing, preferred.
• College degree preferred.

HOURS

Core hours are Monday through Friday, 9:00 a.m. to 5:00 p.m., with additional hours as needed.

This job description sets forth the authorities and responsibilities of this position and may be changed from time to time as shall be determined.

Hogan Lovells is an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, pregnancy, age, national origin, disability, sexual orientation, gender identity or expression, marital status, genetic information or protected Veteran status.