IP Patent Prosecution Specialist

Palo Alto, CA; New York, NY; Chicago, IL; Washington, DC; Boston, MA; Denver, CO; Seattle, WA; San Diego, CA; Reston, VA

Summary

Our client, an AmLaw50 firm with an IP Patent Prosecution Specialist to join their IP Practice Services team. The IP Patent Prosecution Specialist (PPS) is primarily responsible for providing specialized patent portfolio and diligence support to patent attorneys, agents, and clients.

Responsibilities

• Oversee IDS management for assigned client patent portfolios
• Review daily and weekly custom PPS docket reports and update notes in Inprotech events
• Create and maintain complex client IDS spreadsheets in Excel and corresponding records in IDS support software (MaxIDS)
• Prepare IDS forms and collect and clean electronic copies of prior art references
• Monitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art references
• Assist with diligence projects and chain-of-title research/assignment issues
• Conduct patent searches using various firm-subscribed databases and public data and prepare and update monitoring spreadsheets upon request
• Prepare patent family trees in Visio
• Prepare and maintain patent portfolio status charts
• Respond to requests from clients’ auditors for audit letters and follow internal audit letter procedures
• Perform tasks in connection with patent opinions (e.g., conduct timekeeper opinion poll, prepare chain of title chart, patent schedule, Officer’s Certificate, and back-up checklist)

Qualifications

• Available to work overtime, as required
• After orientation at firm, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
• 2+ years of relevant patent prosecution experience
• Experience researching IP status and history in PTO databases, including USPTO PAIR, Global Dossier
• Possess working knowledge of EFS and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP), Patent Cooperation Treaty (PCT) Rules and Regulations
• Bachelor’s degree preferred
• Previous law firm experience preferred
• Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs
• Ability to work independently and under pressure/tight time constraints
• Creative and entrepreneurial approach to problem-solving and process improvement
• Flexible and agile, ability to reprioritize with changes in the business
• Strong initiative and a get-it-done attitude
• Excellent communication and interpersonal skills

Compensation

The annualized salary range for this role is $83,200 – $112,320, nonexempt. Compensation depends on experience, qualifications, and location. Our client offers a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and/or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and/or adults and other parental support benefits. In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off (“PTO”) and 10 paid holidays each year. They provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.

#LI-Hybrid