IP Client Specialist (patent prosecution/hybrid)

Merchant & Gould has been a leader in intellectual property law for more than 100 years. We are recognized as one of the most active filers of patents in the country, and are consistently rated among the top patent, copyright and trademark firms. We currently have an opportunity for a patent prosecution legal assistant.  This position is open be filled in any of our office locations.   Salary range is based on years of experience and geographical location.

The IP Client Specialist provides comprehensive client management support to attorneys, focusing on written and verbal communications with clients, maintaining docket and client-specific procedures, and assisting in prosecuting patent applications both in the United States and internationally. Additionally, the role encompasses responsibilities in client billing, workflow monitoring, and ensuring best practices are upheld.

Responsibilities and Duties:

Transfer/Intake

• Act as the point of contact for status inquiries and general questions.
• Provide support for all new prosecution matter intake in collaboration with Transfer Coordinator.

• Serve as liaison on client projects.
• Address specific client issues and prosecution requests as needed.
• Support working attorneys by tracking assignment timeliness.
• Monitor the internal/client review process.
• Coordinate time entry and monthly invoicing with the Billing Coordinator.
• Collaborate with internal client and administrative teams to create, implement, and maintain standardized protocols.
• Assist in creating client-specific documentation templates and protocols.

• Serve as a contact for client billing and communication.
• Verify new associate/hire integration on client billing.
• Review bills to ensure they align with appropriate fee agreements and bill rate adjustments.

• Monitor workflow to ensure no unclaimed or outstanding items.
• Coordinate instructions between clients, working attorneys, paralegals, and foreign associates as needed.
• Address all incoming new matters, update requests, and questions from clients.
• Review and processing all incoming correspondence from third-party docketers.
• Support client managing partners with client management workload.
• Ensure timely reporting of all USPTO and foreign agent correspondence.
• Send internal and client reminders and reports as needed.
• Perform supplementary client docketing, including:
• Manage USPTO e-notifications and communications from foreign associates.

• Update and maintain client docket for all matters and all attorneys.
• Assist other coordinators and share workload for non-standard client projects and document preparation as needed.

• Review all incoming correspondence from the U.S. Patent and Trademark Office (USPTO) for essential docketing.
• Establish and maintain patent files, including opening files and preparing necessary documents for filing (Patent Applications, Preliminary Amendments, Information Disclosure Statements, Responses to Missing Parts, Assignments, Amendments, Issue Fee payments, etc.).
• Maintain clients’ portfolios by facilitating communication between the attorney and clients proactively.

• Engage in ongoing verbal and written communication with attorneys, clients, and foreign associates.
• Provide support for other administrative tasks and projects as assigned.

• Five years of patent prosecution experience within a similarly sized, multi-office law firm is preferred.
• Bachelor’s degree and/or paralegal certificate preferred.

• • Excellent computer skills with knowledge of Microsoft Office Suite, including proficiency in Outlook.
  • Familiarity with electronic case management systems and USPTO rules and requirements; knowledge of PracticeLink and experience with 3E is a plus.
  • Ability to work comfortably with advanced computer software (after training) and effectively use and maintain a computer database. Possible use of speech-to-text transcription software.

• Strong understanding of client billing, communication, and protocol.
• Strong ability to analyze and communicate workflow trends.
• Ability to work independently and meet critical deadlines under supervision of an attorney.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Detail-oriented and able to manage shifting priorities.
• High level of initiative, responsibility, dedication, and accuracy required.

Work Hours
Firm hours are 8:00am-5:00pm Central time. This is a hybrid role and will require on-site presence at least 2 days a week.

On occasions, the job may require working more than 37.5 hours per week and could involve irregular hours.

We are equally committed to providing competitive, affordable health and wellness benefits to help take care of yourself and your family, including: a competitive salary, a comprehensive benefits package that includes employee medical, dental, vision, life, AD&D insurance, short- and long-term disability, 401(k) match, and ten firm holidays.

Merchant & Gould provides equal employment opportunities to all employees and applicants for employment and prohibits discrimination and harassment of any type without regard to race, color, religion, age, sex, national origin, disability status, genetics, protected veteran status, sexual orientation, gender identity or expression, or any other characteristic protected by federal, state or local laws. This policy applies to all terms and conditions of employment, including recruiting, hiring, placement, promotion, termination, layoff, recall, transfer, leaves of absence, compensation, and training. We welcome candidates with disabilities. If you need any accommodation during the application or the recruiting process, please contact our Human Resources Department at 1-612-332-5300.