GENERAL SUMMARY: This position is to assist the Chair of the Trademark Practice Group in the administration of the group and providing service to its clients. This position has a timekeeper number, but has no yearly billable hours target.
ESSENTIAL JOB FUNCTIONS:
• Reviews, sorts, routes, and files in IManage PTO and foreign counsel mail, faxes and emails • Assists with trademark prosecution and portfolio management, including working with outside agents on searches, filings and oppositions • Drafts letters of advice to clients regarding foreign registration and renewal certificates • Drafts letters of advice to clients regarding U.S. prosecution and maintenance • Supervises records and filing function of trademark files • Dockets and de-dockets deadlines for domestic, international and Madrid Protocol trademarks • Manages and maintains docket database for all marks worldwide • Generates reports from docket database including client reports, deadline reports, and ad hoc requests • Reviews and monitors docket to ensure deadlines are met • Assists attorneys with trademark clearances, cancellation actions, and registration renewals • Assists attorneys with matters relating to opposition, cancellation, and infringement • Assists attorneys with online content, domain disputes, and researching domain name matters • Corresponds with foreign counsel regarding active trademark matters • Reviews and processes foreign counsel invoices; corresponds with vendor regarding outstanding invoices and statements of account • Generates Global Estimator Reports • Maintains Deposit Account at USPTO and coordinates with Finance • Prepares new matter reports and engagement letters • Prepares and follows up on specialized proformas and invoices for multinational clients; provides clients with estimates and budgets. Maintains contacts in DechertCRM • Coordinates arrangements of group attendance and itineraries at professional meetings and conferences • Coordinates department orientation of new personnel • Schedules Trademark Group meetings • Assists with preparation of marketing materials for client development purposes • Liaises with IT personnel and vendors to address issues with docket database • Assists with miscellaneous projects assigned by IP attorneys, paralegals, and/or practice group director or administrator. • Performs any and all other duties as necessary for the efficient functioning of the Department, Office and Firm. • Practices and fosters an atmosphere of teamwork and cooperation.
QUALIFICATIONS / Knowledge Skills and Abilities: · Knowledge of the Firm’s Policies and Procedures · Strong written and verbal communication skills · Strong interpersonal skills · Strong drive to action and sense of urgency · Strong initiative and self-motivation · Strong proofreading skills · Ability to prioritize and coordinate work · Ability to maintain extremely confidential information · Ability to make objective, independent judgments · Ability to think critically and creatively in a pressured environment · Ability to clearly and effectively communicate with varying levels of people within the organization · Ability to work productively and cooperatively with other employees · Ability to constantly learn new skills as they become necessary · Equipment: computer, scanners, fax machines, duplicating machines · Knowledge of CPI trademark docketing system · Systems Required: IManage, Word, Excel, Elite, Legal Key, Carpe Diem, CPI, Global Estimator, CRM · High School Diploma or College degree or applicable intellectual property experience
Founded in 1875, Philadelphia, Philadelphia based Dechert is a leading international law firm with 26 offices in the United States, Europe, Asia and the Middle East. The firm has 800 lawyers, through whom they deliver seamless, high-quality legal services to clients wherever they do business. The firm maintains offices in Philadelphia, London, Boston, New York City, Brussels, Harrisburg, Hartford, Newport Beach, Paris; Princeton, Luxembourg, and Washington D.C., providing legal counsel in a wide range of specialties, from banking, taxation, and antitrust to intellectual property, biotechnology, litigation, and employment law. Dechert's 800 lawyers serve large multinational companies, small startups firms, nonprofit groups, government agencies, and individuals. Its predecessor firms represented the Pennsylvania Railroad and Getty Oil Company, among others. Contemporary clients include Aetna, Pfizer, US Airways, the Investment Funds Institute of Canada, Nomura Capital, The British Retail Consortium, Gerber Products Company, Internet Capital Group, CNN, and Comcast Corporation. Francis Biddle and U.S. Senators Arlen Specter and Joseph Clark were three prominent Dechert partners. The firm's focus on providing strategic, pragmatic and responsive legal counsel in each of its core practices has made it the firm of choice for clients seeking to structure transactions, manage risk, protect and develop assets, pursue remedies and resolve disputes. Dechert's history is both long and impressive. It is one of the largest international law firms, more so after a major merger in 2000. Dechert began its journey to its current name and standing in 1875, with Wayne Mac Veagh and George Tucker Bispham starting a partnership to form, MacVeagh & Bispham, in Philadelphia in 1875. Bispham, was a graduate of the University of Pennsylvania and University of Pennsylvania Law School whilst Mac Veagh had graduated from Yale in 1853 and then studied as an apprentice in a law firm before joining the bar in 1856. After the Civil War, Mac Veagh served as the U.S. minister to Turkey and on an Indian commission. In 1877 the firm marked a major turning point when Mac Veagh was named general counsel and solicitor for the Pennsylvania Railroad's Philadelphia District. Thus began about a century of service to one of the nation's largest railroads. With America's entry into World War II, the firm, then known as Barnes, Myers & Price, lost most of its lawyers to military or government service. With just a handful of lawyers remaining, Barnes, Myers & Price in 1942 merged with another Philadelphia law firm, Dechert, Smith & Clark, established by Robert Dechert and Curtis Bok in 1930. As laws and regulations governing corporate entities proliferated, the firm offered a more diverse range of services. Focused practice groups, including taxation (headed by Dechert himself), business & corporate, fiduciary and litigation, were introduced in 1946. In 1954 the firm hired its first full-time female associate, but it was not until 1973 that a woman became a Dechert partner. Amongst the first law firms to recognize the significance of serving clients abroad Dechert established offices in Brussels, London, Paris, Luxembourg, Munich, Hong Kong, Beijing, Moscow, Dublin, Frankfurt, Almaty, Dubai and Tbilisi. In 1994 Dechert Price & Rhoads had formed an alliance with the London law firm Titmuss Sainer & Webb. After six years of the alliance, the two firms merged in 2000 to create a unified partnership called, simply, Dechert that by 2001 included 700 lawyers in 12 worldwide offices. Known since the new millennium as Dechert LLP, the firm has numerous top-ranked practices and an impressive global footprint. Dechert lawyers represent major players on the world economic scene in headline-making matters requiring in-depth experience, deft strategic thinking and a solid grasp of the big picture.