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Legal Secretary (IP)

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Haynes and Boone, LLP

Sep 13

  • Job
    Full-time
    Mid & Senior Level
  • Los Angeles, +2
  • Quick Apply

AI generated summary

  • You need 3-5 years of patent prosecution experience, strong IP knowledge, advanced Word/Excel skills, and the ability to manage multiple tasks and communicate effectively.
  • You will prepare and file applications, manage deadlines, organize files, assist with billing, compose correspondence, coordinate meetings, and provide support to attorneys and associates as needed.

Requirements

  • At least three to five years of experience with patent prosecution work and a strong working knowledge of U.S. Patent and Trademark rules, processes and procedures.
  • The secretary should possess working knowledge of general office procedures, as well as, strong familiarity with legal terminology related to Intellectual Property (IP).
  • Must be knowledgeable in the following IP related technologies or similar technologies: PCT Easy, EFS Web, PAIR, Pattsy Wave, PatentHunter, CIP - Patent Annuity Service, USPTO, WIPO and Espace.net websites.
  • Proficiency in the firm's technology and applications is highly preferred (DeskSite, Chrome River, Carpe Diem).
  • Expected skills include Excel, Word, PowerPoint, and Outlook.
  • Prior experience managing expense reports, client bills, multi-line phones, and conflict-checking forms, as well as working with Interaction or another CRM database, is strongly preferred.
  • Experience supporting multiple attorneys is required.
  • The legal secretary must possess advanced word processing/computer skills utilizing a variety of software programs including, but not limited to, MS Word, Excel, Outlook and PowerPoint.
  • The individual must possess excellent written and verbal communication skills, including grammar, spelling and punctuation.
  • Strong phone etiquette, attention to detail and follow through skills are required.
  • Must be knowledgeable with legal filing and record-keeping practices as relevant to IP.
  • Must be highly organized and able to successfully multi-task and meet set deadlines.
  • Strong customer service skills, ability to be flexible and work effectively as part of a team is required.
  • The legal secretary should possess a high school diploma.
  • Two years of college or equivalent preferred but not required.
  • Must be able to move around the office up to 15% of the time to make copies, fax, file, etc.
  • Remains stationary at least 85% of the time.
  • This position operates computers and other office productivity machines (e.g., fax machine, copier, printer) on a regular basis.
  • 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.
  • Office Environment.
  • Overtime required.

Responsibilities

  • Prepare prosecution filings for attorney/agent review and approval, including IDSs, terminal disclaimers, restriction requirements, and shell amendments.
  • Manage the filing of all Foreign/U.S. applications through PCT Easy/EFS Web, staying updated on electronic filing system upgrades.
  • Monitor filing deadlines on docket reports for US and foreign patent, trademark, and copyright applications; assist with review/clearance of docket dates and communicate details to the Docketing department.
  • Read, prioritize, route, and follow up on incoming communications (faxes, emails, correspondence), ensuring timely reporting to clients.
  • Transmit documents electronically to clients, courts, USPTO, Secretary of State, Copyright Office, and other agencies using appropriate firm methods.
  • Create, maintain, and organize electronic and paper files; maintain client preferences and contacts within firm systems.
  • Assist in coordinating client billing and time entry, auditing and revising as necessary, and following client-specific instructions.
  • Assist with coordination of incoming and outgoing file transfers.
  • Delegate tasks to clerks, monitor their work product, and ensure deadlines are met.
  • Prepare and file assignment recordation online with the USPTO.
  • Calculate filing cost estimates.
  • Copy, distribute, send (electronically and/or via mail, courier, or express service), file, and otherwise handle completed work.
  • Maintain electronic files, contacts, and case dockets for attorneys.
  • Perform administrative functions related to firm tasks, including processing new client/matter requests, client bills, time reports, and expense reports.
  • Compose correspondence for client-related matters; perform word processing for drafts, revisions, and final documents, including proofreading and redlining for accuracy.
  • Coordinate meetings and appointments, receive clients/guests as requested, and maintain appointment calendars for attorneys (including hearings and other commitments).
  • Provides secretarial assistance to summer associates, visiting attorneys and attorneys whose secretaries are absent. Performs other related duties as needed or assigned.

FAQs

What is the primary responsibility of the Legal Secretary (IP)?

The primary responsibility of the Legal Secretary is to perform full secretarial and administrative duties for Intellectual Property Attorneys and Patent Agents while exercising independent judgment and discretion.

What qualifications are required for the Legal Secretary (IP)?

The Legal Secretary should have at least three to five years of experience with patent prosecution work and a strong working knowledge of U.S. Patent and Trademark rules, processes, and procedures.

Are there specific technologies the Legal Secretary needs to be familiar with?

Yes, the Legal Secretary should have knowledge of technologies such as PCT Easy, EFS Web, PAIR, and other IP-related tools, as well as proficiency in Microsoft Office applications.

What are the expected working conditions for this role?

The working conditions are in an office environment, and the position may require overtime.

Is there a requirement for travel as part of this position?

No, travel is not explicitly mentioned as a requirement for this position; however, the secretary may need to move around the office to perform tasks such as copying and filing.

What is the salary range for the Legal Secretary (IP) position?

The expected salary range for this position is $85,000 to $110,000, depending on the candidate's experience and skillset.

Are there opportunities for professional development in this position?

While not explicitly mentioned, the position's nature in a law firm environment typically provides opportunities for professional growth and skill enhancement.

What kind of communication skills are expected from the Legal Secretary?

The Legal Secretary must possess excellent written and verbal communication skills, including strong grammar, spelling, and punctuation abilities.

Does the Legal Secretary provide support to other attorneys?

Yes, the Legal Secretary may provide secretarial assistance to summer associates, visiting attorneys, and attorneys whose secretaries are absent.

What level of education is preferred for this position?

A high school diploma is required, while two years of college or equivalent education is preferred but not mandatory.

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Haynes and Boone, LLP

Law
Industry
1001-5000
Employees
1970
Founded Year

Mission & Purpose

Haynes Boone, is an international corporate law firm with 19 offices, spanning Texas, New York, California, Charlotte, Chicago, Denver, Virginia, Washington, D.C., London, Mexico City and Shanghai, providing a full spectrum of legal services in energy, technology, financial services and private equity. With about 650 lawyers, Haynes Boone is ranked among the largest U.S.-based firms by The National Law Journal, The American Lawyer and The Lawyer. It was recognized in the BTI Consulting Group’s 2022 “A-Team” report, which identifies the law firms that in-house counsel commend for providing superior client service. The firm is also recognized as a leader in DEI initiatives. It achieved Mansfield Rule 5.0 certification in 2022 after completing a rigorous 12-month collaboration with Diversity Lab.