IP Docket Clerk

Dallas, TX
May 19, 2017
Institution Type
Outside Academe

Job Description

At Haynes and Boone, our people are the driving force behind our success. Because we value the role every individual plays in how we deliver exceptional legal services, we hire people who will contribute to our professional reputation, enhance client relationships and share in our success. Our Dallas, T.X. office has an immediate opening for a Docket Clerk to join our dynamic team. The Docket Clerk will provide assistance to the Intellectual Property Department of Haynes and Boone, LLP, a $70+ million practice with over 100 attorneys spread over 10 offices. This position will assist the Intellectual Property practice with its docket database (PATTSY) to enable and ensure timely responses to U.S. and foreign patent prosecution matters.

This position will assist the Intellectual Property practice with its docket database (PATTSY) to enable and ensure timely responses to U.S. and foreign patent prosecution matters.

Knowledge/Experience: The Docket Clerk requires one or more year's of foreign and US docket experience. PATTSY software experience is preferred.

Company Description
Haynes and Boone, LLP is an international corporate law firm with offices in Texas, New York, California, Chicago, Denver, Washington, D.C., London, Mexico City, and Shanghai. With more than 600 lawyers, the firm provides a full spectrum of legal services in technology, financial services, energy and private equity and is ranked among the largest U.S.-based firms by The National Law Journal. The 2016 American Lawyer Corporate Scorecard rated the firm as one of the top two handling equities work for non-U.S. companies.

This employee is responsible for supporting the Intellectual Property and Technology Transactions Practice Group by monitoring trademark dockets for US/Foreign filing (e.g., requesting/receiving filing instructions from the client to finalize documents for client/attorney/agent review and provide/file required documents, such as through the USPTO Electronic filing system), document management and legal research.

This position requires the individual to perform with a high degree of independent judgment and discretion and requires a thorough knowledge of organizational procedures and precedents.

Other Duties
1. Assist team with routine trademark duties, e.g., status checks, filings with the USPTO and docketing.
2. Maintain trademark docket from prosecution phase through registration of the trademark and issues docket to attorneys.
3. Assist in preparation of trademark pre and post registration and renewal documents as required.
4. Perform in-house searches of domestic and foreign trademark office databases to support clearance and opinion work of attorneys and conduct initial analysis of search results. Instruct foreign counsel with regard to such searches; solicit and review opinions from foreign counsel with regard to the results of such searches.
5. Preliminary trademark clearance; preparation and filing of trademark applications; preparation of correspondence regarding prosecution documents including Office Actions, Statements of Use, and Renewals.
6. Provide support for domestic and foreign infringement matters, as requested, by assembling evidentiary material.
7. Utilize, search, and research information using the following websites - USPTO, WIPO, Espace.net, and other trademark online resources.

Reporting Relationship: Reports directly to the Office Administrator, and indirectly to assigned attorneys.

Desired Education: A paralegal certificate or currently enrolled in a recognized paralegal program and/or college degree required.

Knowledge/Experience At least two years of trademark experience required. Must have an understanding of U.S. Trademark rules, processes and procedures and able to do legal research within the TMEP and CFR. Should feel comfortable providing general transactional and/or TTAB/UDRP dispute support to attorneys. Knowledge of another language preferred.

Skills: The Paralegal must possess above-average writing skills and have the ability to conduct legal research and translate difficult concepts into simple terms. This employee should also have great computer skills.

Education: Paralegal certification from an ABA approved school or bachelor's degree in a field related to law, administration, or liberal arts is required.
Physical Demands and Working Conditions Physical Demands: Must be able to move around the office up to 15% of the time to make copies, fax, file, etc. Remains stationary at least 75% of the time. This position constantly operates, computers and other office productivity machines (e.g., fax machine, copier, printer, etc.). Occasionally required to move documents or files weighing up to 15 lbs. This position requires constant communication and exchange of information with the Firm attorneys, clients and staff. This position must be able to inspect and observe information on a computer screen at least 80% of the time.

Working Conditions: Office Environment. Overtime Required.

Dallas, TX


Fri, 28 Apr 2017 08:16:06 PDT