Intellectual Property Administration Subject Matter Expert

IP Admin SME

We are looking for someone to join our IP Admin Team at Noida. This position exists to process correspondences issued by United States Patent & Trademark office (PTO or USPTO), patent offices worldwide and the filing documents submitted in PTO during the patent & trademarks life cycle. The main purpose of the role is to review, docket, de-docket information received from PTOs, law firms, agents, and clients into Intellectual property management system (IPMS) and routing the said information to the appropriate attorneys or paralegals for action.

This is an exciting opportunity to work in the IP field where-in, self-improvement initiatives to drive client delight, building capability are added learnings.

We are the largest Intellectual Property Administrative service provider.

Experience, Education, Skills, and Accomplishments

• Bachelor’s degree & Minimum 3 years of IP Patent and Trademark experience.

• P1 & P2 are eligible to apply & rating should be achieved and above.

• Eye for detail; High concentration and focus

• Cultural sensitivity (ability to adjust in various team cultures)

• Good typing speed 45-50 wpm with 98% accuracy

• Confident and proactive team player, with good interpersonal skills

• Ability to work independently and efficiently with minimum / no supervision.

It would be great if you also had

• IP Knowledge with experience to work on different IPMS' is added advantage and preferable.

• Candidates with knowledge and hands-on experience across multiple jurisdictions (US and non-US) in Patents and Trademarks will have an added advantage and preference.

• Good written & verbal communication skills

• Basic MS office: Proficiency in Microsoft office suite programs, including Word, Excel, Outlook, etc.

• Strong analytical skills to comprehensively evaluate the data.

What will you be doing in this role?

• Docketing: calendaring the statutory & non-statutory deadlines in Intellectual Property Management System (IPMS) along with relevant documents to preserve IP rights.

• Prioritize daily docketing/de-docketing requests and other allocated tasks as agreed with client to complete in each day to keep IPMS current and correct.

• Review patent & trademarks prosecution related documents (US & Non-US) received via mail or shared site and update / create the records in IPMS as per the standard operating procedures (SOPs).

• Create and update patent & trademarks records in IPMS along with family linking of direct and subject matter related (SMR) applications.

• Effective communication with Attorneys, Paralegals, Law firms, foreign agents, and other stake holders to seek instructions and clarification on certain tasks.

• Maintain the data integrity of IPMS and proactively monitoring the docket to ensure that all PTO & client deadlines are met.

• Facilitate timely filing of all patent and trademarks application & office action response through order letters and other required instructions.

• Facilitate accurate and timely payment of all PTO fees including the maintenance fees, coordinate with client for payment instructions and coordinate with annuity service providers or law firms.

• Abreast of changes in PTO guidelines and procedures and extend support to team with process related inputs.

• Training: Providing OJT’s to new joiners, conducting refresher trainings.

• Audits: Ability to perform internal and PTO Audits is preferred

• Quality Check: Should be able perform docketing Quality audits

• 1st level query resolution

About the Team

The team consists of 10-15 members and is reporting to the Manager Operations.

Core process related responsibilities: IP docketing is the process of tracking deadlines related to the prosecution of patents, trademarks, and copyrights before their respective governing offices. This includes interacting with clients including external vendors - Law firms, Annuity service providers etc., Quality Auditors, IP Operations function heads, Continuous Improvement team.

Hours of Work

• This is a full-time role requiring 40 working hours per week based out of Noida, India (IST).

• Work Mode-Hybrid as per Clarivate location

At Clarivate, we are committed to providing equal employment opportunities for all  qualified persons with respect to hiring, compensation, promotion, training, and other terms, conditions, and privileges of employment. We comply with applicable laws and regulations governing non-discrimination in all locations.

Experience Level

Mid Level