IP Secretary

Who We Are


ArentFox Schiff is an award-winning, globally recognized law firm that delivers sophisticated, innovative, and practical legal solutions to clients around the world. With more than 600 lawyers and policy professionals, ArentFox Schiff's expertise is sought out by Fortune 500s, start-ups, international governments, non-profits and trade associations, and private individuals. Our work spans highly complex, global matters as well as the deeply personal issues that shape the lives of individuals and communities.


Why Join Us


At ArentFox Schiff, we know that diverse backgrounds produce different perspectives, richer thinking, and more creative solutions to the challenges our clients face. We hope you share that vision. Join us and take on the challenge of doing meaningful work while helping us build upon a culture that reflects our dedication to diversity, equity, and inclusion. We base all of our employment decisions on merit and do not discriminate on the basis of any legally protected characteristic.


Job Description


This position can be located in our Washington, DC or Los Angeles, CA office.


Under limited direction, guided by department objectives and priorities, the IP Secretary must perform a variety of secretarial tasks to support assigned patent and /or trademark attorneys and other timekeepers (collectively referred to as "timekeepers"). A key component of this position is to provide a high level of internal and external client service and support, while producing a high volume of consistently excellent work product. In addition, an IP Secretary must maintain a general knowledge of the Firm's patent and/or trademark practice area and a specialized knowledge of the assigned timekeepers' practice area(s) and clients.


The IP secretary is expected to provide professional and quality support to a team of timekeepers. This requires (i) teamwork; (ii) the ability to work closely and effectively with others; (iii) strong communication and technical skills; and (iv) the ability to work under deadlines, time pressures and a high level of demand. An IP Secretary must be able to perform the below duties for all assigned timekeepers.

ESSENTIAL DUTIES AND RESPONSIBILITIES*

Billing/Expenses: Firm financing and effective operations are heavily dependent upon the IP Secretary's efforts to ensure that client bills are accurately produced on a monthly basis. It is also important to obtain prompt reimbursement for a timekeeper's business-related expenses. This includes, but is not limited to, such duties as:

• Prepare, edit, proofread and/or close daily time entries as directed by assignments; may help create draft time entries from calendars and notes.
• Under general direction from partner and accounting personnel, edit, proof and complete complex clerical procedures relating to billing for clients; may assist in collection efforts.
• Prepare expense reimbursement documentation for assigned attorneys/agents for submission to Accounting as appropriate.
• Review foreign associate bills for services rendered and forwards to the timekeeper for approval. From time-to-time will assist with reviewing and reconciling statements from foreign associates.

Administrative Duties: IP Secretaries are responsible for ensuring the smooth and efficient operation of their timekeepers daily schedule. This includes, but is not limited to, such duties as:

• Calendar due dates, speaking engagements, meetings and deadlines

• Make appointments and schedule interviews.
• Create and maintain files including, but not limited to, saving emails and other electronic files.
• Screen and route telephone calls.
• Receive and direct clients and visitors.
• Coordinate travel arrangements with travel agency and firm's Travel Coordinator.
• Handle routine client/non-client inquiries with little or no guidance.
• Perform research as directed.
• Coordinate resources to ensure multiple and complex tasks/activities are completed as required.
• Provide guidance (i.e., mentoring) for new employees.
• Provide overflow assistance as needed.

Document Preparation: In order to provide clients with legal services of the highest quality, it is essential that IP Secretaries produce accurate, error-free and properly formatted documents. This includes, but is not limited to, such duties as:

• Prepare a variety of correspondence, reports, memoranda, and legal documents required by the timekeepers to whom assigned from handwritten notes, transcribing equipment, drafts or oral instructions.
• Proofread, photocopy, assemble, and distribute prepared materials as necessary.
• Keyboard, scan and revise a variety of documents.
• Coordinate lengthy document production with Resource Center personnel

Client Service: In order to maintain good client relationships, it is important for IP Secretaries to provide relevant and timely information to clients and timekeepers (including times when they are out of the office) in a professional, courteous and effective manner. This includes, but is not limited to, such duties as:

• Ensure exemplary client service to all internal and external clients; proactively promote client service throughout department and among teams; respond to peer requests with recognition that the request serves a client or Firm need.
• Proactively communicate with internal and external clients to ensure that administrative customer service needs are met.
• Regularly review client service procedures and standards in relation to job position and implement improvements and enhancements to client service.

Document Management: The quick retrieval of information is a key aspect to providing high-quality legal services. As such, it is important for IP Secretaries to maintain current and orderly electronic and paper files according to Firm guidelines. This includes electronic files in iManage, Outlook and FileTrail. Duties include but are not limited to:

• File maintenance
• Preparing requests to open new U.S. or foreign matters,
• Filing official documents and correspondence,

Coordinating Work Flow: IP Secretaries are responsible for ensuring their timekeeper's work is prioritized so that all deadlines are met.

Teamwork: IP Secretaries are expected to work together as a team to support the Firm and meet the needs of its clients. As such, they are responsible for assisting one another with overflow work and filling in for each other during absences when necessary.

IP Secretary Core Duties:

• Submits Conflict Checks
• Prepares Engagement Letters
• Requests new client matter numbers
• Matter specific research / search at USPTO at attorney's request
• Monitor and answer any assigned docket items by the close of business each day
• Invoice processing
  
  
  Patent Prosecution

• S end search requests to search firm

• Prepare & send PFS results to Client
• Send attorney filing recommendations to client
• Send first draft of application to inventors / client, including inventor confirmation
• Prepare/ analysis shells (US / foreign)
• Forward draft response to client (US / foreign)
• File responses (US)
• Petition to Expunge Pre-Allowance
• Status Checks & Inquiries
• Terminal Disclaimer(s)
• Petition to Revive - OA response
• RCE with decision to withdraw from petition
• Request for Continuing Examination (depending upon stage of prosecution )
• Petition to Withdraw (as Counsel)
• Miscellaneous PTO Communications and tasks not covered under the Patent Prosecution Department (PPD) job description (PPD Coordinator assigns to appropriate secretary)
• Estimates
  Reporting/Communications
  US conversion/Foreign Filing reminders

• Restriction Requirements
• Advisory Actions
• Applicant / Examiner-initiated Interview Summary
• Decisions on Petition
• Interview Summaries (not received with OA/NOA)
• Notice of Non-Compliant Amendment
• Ex-Parte Quayle
• Notice of Abandonment
  Trademark

• Prepare weekly attorney docket reports
• Gathering evidence from iManage (Certificates of Registration) at attorney's request
• Client Spreadsheets (Reports)
• Assisting with Client invoicing
• Client Collections (in coordination with and at the direction of the Accounting Department)
• Proofreading /Quality Review of primary duties
  OTHER DUTIES AND RESPONSIBILITIES

• Internal / Client requested tracking spreadsheets
• Other duties as assigned and approved by management
  MINIMUM QUALIFICATIONS
  Knowledge/Skills/Abilities:

• Excellent computer skills with knowledge and ability to work proficiently with Microsoft Office Suite as well as accounting systems (time and billing, expenses, conflicts, new matter programs). Proficiency in Excel is preferred.
• Excellent written and verbal communication skills
• Meticulous attention to detail, accuracy, and thoroughness.
• Responsible, Professional and Self-Motivated
• Ability to maintain confidentiality
• Detail oriented with ability to handle multiple projects simultaneously and meet deadlines
  Education:

• Minimum high school diploma or equivalent; college degree a plus but not required.
  Experience:
  
  • 5+ years of experience in an administrative position.
  • 3+ years of experience in Patent Prosecution.
  • Chinese proficiency is a plus.

Benefits and Salary


We know that the needs of our employees vary and can change throughout the different stages of life. That's why we offer a wide array of flexible benefit options designed to help you live healthy, live well , and live for tomorrow . In addition to medical, dental, vision, profit-sharing, generous paid time off, and numerous other benefits, we also provide a flexible reimbursement account that helps pay for the things that contribute to your personal well-being, in your own way.


This is an hourly, non-exempt position that is eligible for a generous overtime plan that exceeds minimum legal requirements.


The anticipated good-faith base salary range for this position is:

• DC: $92,000 to $126,500 per year.

Your exact offer will be based on a variety of factors, including but not limited to, your experience, skills, and overall qualifications. We also review compensation regularly against industry benchmarks and performance outcomes, so you can grow your career here with confidence-knowing your pay recognizes both your impact and our commitment to an equitable approach.


In addition to a competitive base salary, certain positions are eligible for a comprehensive performance-based bonus, payable monthly or annually.


Commitment to Equal Opportunity


ArentFox Schiff is committed to equal employment opportunity and diversity in the workplace. We base all employment decisions on merit and maintain a policy of considering all qualified applicants for employment without regard to race, color, religion or creed, sex, gender, sexual orientation, gender identity or expression, age, citizenship status, order of protection status, national origin, ancestry, medical condition, genetic information, marital status, physical or mental disability, parental status, source of income, military or veteran status, unfavorable discharge from military service, or any other basis protected by applicable law. We will consider qualified applicants with criminal histories in a manner consistent with the San Francisco Fair Chance Ordinance.


* The job description is a general summary of the major duties. It may not specify all duties, tasks, and assignments associated with a job. It does not limit or in any way modify the right of management to direct, assign, and control the work of employees in a unit. Accuracy, attention to detail, ability to work effectively in a team environment, and ability to work in an atmosphere of multiple projects and shifting priorities are requirements of all jobs at ArentFox Schiff LLP. Additional job-related qualifications may be specified for some openings. Job descriptions are subject to periodic review and modification.


WORKING CONDITIONS


The following table indicates the degree of working conditions expected for the job. Reasonable accommodations may be made to enable individuals with disabilities to meet these requirements.


N/A = 0-10%, Occasionally = 11-33%, Frequently = 34 - 66%, Constantly = 67 - 100%

Requirement

Frequency


Travel


Occasionally


Sitting


Constantly


Standing


Occasionally


Walking


Frequently


Reading


Constantly


Typing


Frequently


Concentration


Frequently


Oral and Written Communication


Frequently


Horizontal Reaching


N/A


Vertical Reaching


N/A


Twisting


Occasionally


Repetitive Arm/Hand/Finger Movements


Frequently


Weight


Occasionally, up to 15 lbs.