Job Description
Am Law 200 firm Thompson Hine LLP, a full-service business law firm with over 400 lawyers in 10 offices that has been ranked number #1 among “Most innovative North American law firms,” is currently seeking an experienced, forward-thinking, organized, and personable Intellectual Property (IP) Prosecution Manager to oversee all aspects of our IP administrative department, including leading a talented team of IP professionals in any of our Atlanta, Chicago, Cincinnati, Cleveland or Dayton offices. Due to significant growth in our IP group, we are now hiring a talented and experienced IP Prosecution Manager who can bring their expertise from several other firms or in-house legal departments to shape the future of IP Prosecution at our firm.
The ideal candidate will have extensive experience in domestic and international Patent and Trademark prosecution law and a deep understanding of relevant regulations. This role requires strong leadership, vision, staff management, team building, and relationship-building skills for fostering a collaborative work environment.
Key Responsibilities:
- Oversee and manage staff and paralegal professionals handling all domestic and foreign patent and trademark filing processes, ensuring compliance with best practices and legal requirements, including accurate and timely docketing thereof;
- Collaborate with Practice Group Leader, Attorneys, Paralegals, Management, Business Staff, Vendors, Consultants and more to continuously improve IP prosecution processes, workflows, and training programs, including through facilitation of strategic planning.
- Monitor deadlines, progress, and quality of work generated by the IP team, ensuring timely and accurate filings, including establishing and managing a quality assurance program.
- Serve as the primary point of contact for the patent and trademark docketing system, including vendors such as Anaqua (PATTSY) and CPI;
Leadership & Team Development
- Recruit, onboard, coach, mentor and retain a talented team of IP professionals; set clear performance expectations, conduct annual reviews, and manage workload allocation, timekeeping, and coverage.
- Foster an inclusive, collaborative culture that values continuous learning, open communication, relationship-building, and recognition of individual and team contributions.
- Develop succession plans and career-development roadmaps to ensure bench strength and knowledge continuity and professional development opportunities.
Operational Management
- Oversee end-to-end domestic and foreign trademark and patent-filing workflows, including U.S., PCT, EPO, WIPO, and other national-phase filings; monitor deadlines and quality;
- Ensure the timely preparation and submission of Information Disclosure Statements (IDS), Office-action responses, formalities documents, assignments, and maintenance-fee payments; ensure full compliance with USPTO, WIPO, and foreign-office requirements;
- Oversee all docketing functions, partnering with internal and external docket-system providers (Anaqua, CPI, Foundation IP, etc.) to maintain data integrity, automate reminders, and generate real-time metrics;
- Serve as the primary liaison to attorneys, staff, and foreign associates for procedural guidance, distribution of work and best-practice recommendations;
- Establish, document, and enforce written policies, SOPs, and productivity standards; drive continuous improvement therein;
- Participate as an ad hoc member of the Patent & Trademark Procedures Committee and other firmwide initiatives focused on innovation and client service;
- Partner with Management to prepare annual budgets, justify capital and head-count requests, and manage vendor relationships;
- Evaluate practice-wide resource utilization and recommend staffing models, outsourcing, or technology solutions to optimize profitability without compromising quality;
- Develop and implement a program to ensure timely transfer of Patent Annuity/Maintenance fees responsibilities.
Technology & Data Analytics
- Lead implementation, enhancement, and user adoption of relevant technologies—including PATTSY, CPI, Intapp Open, NetDocuments, Patent Center, licensed databases and automated annuity platforms;
- Track KPIs (cycle time, on-time filing rate, docket accuracy, realization, utilization, and profitability) and present actionable insights to practice leadership;
- Champion data-governance, cybersecurity, and confidentiality protocols to safeguard client information.
Client Service & Relationship Building
- Engage directly with key clients to align prosecution strategies with business objectives, and resolve escalated issues;
- Lead client-facing training sessions on docketing portals, reporting dashboards and leverage feedback to refine internal processes;
- Support business-development efforts by assisting with RFP responses, pitch materials, and value-added service proposals.
Required Qualifications
- Bachelor’s degree required; advanced legal degree (J.D.) a plus;
- Minimum of 6–10 years of progressive patent and/or trademark prosecution experience in a law-firm or in-house setting;
- Minimum of 3 years in a supervisory or managerial capacity;
- Command of U.S. patent rules, PCT procedures, EPO guidelines, and major foreign-filing requirements, including recent USPTO rule changes;
- Demonstrated proficiency with leading IP docketing systems (Anaqua, CPI, PATTSY or Foundation IP) and USPTO/WIPO electronic-filing platforms. Experience with Hands-on involvement in large-scale software-implementation or data-migration projects a major plus;
- High level of computer proficiency in Windows-based software and Microsoft Office Suite applications in particular Excel, Adobe Acrobat, Intapp Open time and billing applications (Aderant), NetDocuments, U.S. Patent Office Electronic Filing System, and other internet research tools;
- Strong project-management acumen; PMP, Lean, or Six Sigma certification a plus;
- Proven ability to lead through change, prioritize competing demands, and deliver accurate work under tight deadlines in a fast-paced environment;
- Exceptional interpersonal, written, and verbal communication skills with a client-service mindset, including comfort presenting to executive-level stakeholders and facilitating cross-functional workshops;
- Experience partnering with external consultants on IP department structure to identify and implement prioritized changes;
- Displays a high level of initiative, effort, and commitment towards driving results for the department and team;
- Availability to work on-site a minimum of two days per week and travel periodically to other firm offices.
Pertinent to our Chicago office, compensation is determined upon the market in which the position is located, the responsibilities of the position, the experience and skills of the applicant, and other job-related factors. The starting salary range for this Chicago position is $124,000 to $194,000.
Thompson Hine LLP is an equal opportunity employer that offers competitive wages and a robust benefits package. Benefit offerings include, but are not limited to, medical, dental, and vision insurance as well as paid time off (PTO).
Job Tags
Immediate start, 2 days per week,