Legal Assistant

Thompson Hine LLP, an AmLaw 200 firm consistently recognized for our Innovation, Inclusion, and collaborative culture, is seeking an experienced Legal Assistant (37.5 hours/week) to join our Dayton office. The Legal Assist will apply knowledge of patent prosecution processes, procedures, and filing requirements to independently prepare prosecution documents, formality documents, and client correspondence, and proactively act on items received from the U.S. Patent and Trademark Office to ensure completion of all requirements related to patent prosecution.

In addition, the position requires preparation and transmission of monthly attorney bills and interaction with clients, both by phone and by email, and working with docket in the preparation of schedules of action deadlines for attorneys.

JOB FUNCTIONS AND RESPONSIBILITIES

• Provide administrative/secretarial support to assigned timekeepers by providing transcription and word processing services, conducting database searches, completing business intake and billing tasks, maintaining electronic and physical files, and preparing status reports at the request of attorneys and/or clients.
• Prepare and upload documents for filing at USPTO, including transmittals/forms, fee calculations, POAs, Terminal Disclaimers and Application Data Sheets.
• Prepare response templates to USPTO patent Office actions and secure copies of cited references.
• Prepare draft correspondence and correspond directly to clients reporting the filing of Applications, receipt of Office actions, and filing of Amendments.
• Review items received from the USPTO and take action to complete them, including initial prep work, obtaining cited references, reporting to clients, verifying docketed due dates, and reminding attorneys/timekeepers of imminent deadlines. Assist docketing personnel as necessary.
• Manage attorney dockets to ensure compliance with all deadlines and maintain direct flow of all items to and from docketing personnel; prepare docket reports upon attorney or client request.
• Prepare inventor/applicant documents (Oath/Declaration, Assignment, POA).
• Proofread filing receipts from USPTO and prepare and file documents to effect correction of errors as needed.
• Collaborate with legal assistants in the IP group, including outside of the Dayton office, in connection with patent prosecution matters.
• Perform word processing, transcription and/or review of attorney-prepared patent applications, amendments, and correspondence (including trademark and copyright infringement matters).
• Conduct database searches using various on-line resources and prepare/maintain status charts and reports; provide same to the attorney and client.
• Facilitate accounting with USPTO fees and resolve discrepancies.
• Perform status checks for U.S. and foreign cases and respond to status inquiries from clients and foreign counsel.
• Receive and process incoming invoices and investigate payment status upon request.
• Perform client billing tasks including entering, revising and releasing dictated daily time charges, preparing and sending monthly client bills, and investigating payment status upon request.
• Conduct conflict checks, new client or matter requests, draft engagement letters.
• Prepare and file Information Disclosure Statements as necessary.
• Prepare patent application trifolds and maintain physical files and electronic files. Facilitate incoming and outgoing file transfers.
• Draft correspondence to foreign counsel regarding incoming and outgoing transferred cases.
• Other duties and projects as assigned.

REQUIRED QUALIFICATIONS

Education, Training and/or Experience

1. High School diploma required.
2. At least five years of experience as a secretary in a law firm, preferably as a patent/trademark prosecution secretary in a law firm.
3. Strong knowledge of USPTO formalities and filing procedures preferred.
4. Four-year college degree preferred.

Knowledge, Skills, and Abilities

1. Proficiency in all Microsoft Office programs including Outlook, Word, and Excel.
2. Knowledge of PATTSY and CPI docketing systems preferred.
3. Knowledge of the USPTO’s e-filing system (EFS), document information system (PAIR), and assignment recordation system (EPAS) preferred.
4. Excellent written and oral communication skills.
5. Ability to prioritize workload and maintain a high level of accuracy and attention to detail while managing multiple priorities.
6. Ability to work independently, take initiative and collaborate effectively with teammates.
7. Ability to interact effectively with attorneys, clients, and others across practice groups and functional areas within the firm.
8. Regular attendance and punctuality are essential functions of this job.
9. Excellent customer service skills and telephone etiquette are mandatory.
10. Possesses interpersonal skills necessary to communicate effectively with a diverse group of employees.
11. Ability to handle tasks under pressure.
12. Ability to adjust work schedule to work other hours, as required.

Thompson Hine LLP is an Equal Opportunity Employer that offers competitive wages, and a robust benefits package. Benefit offerings include, but are not limited to, medical, dental, and vision insurance as well as Paid Time Off (PTO).

Thompson Hine EEO Policy