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.

Job Description

This position is available in the Boston, Chicago, New York and Washington, DC offices and operates on a hybrid schedule.

ESSENTIAL DUTIES AND RESPONSIBILITIES* (For a full list of duties, please see posting on our career site)

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.

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.

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:

• Send 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 ANDRESPONSIBILITIES

• 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

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:

Washington, DC: $70,000-$105,000

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.