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Full Time
N/A
Posted 3 weeks ago

Seeking an International Patent and Annuities Specialist to join the IP Practice Services team. 

Position summary: The International Patent and Annuities Specialist leads annuity outsourcing efforts, coordinates client, foreign agent, and vendor annuity related tasks, and provides full support to patent attorneys and agents in filing and maintaining international and foreign national applications and patents. Specific duties and responsibilities include, but are not limited to, the following:.

Annuities Specialist responsibilities:

  • Actively encourage clients to outsource annuity and maintenance fee management in accordance with firm risk management requirements. Support the outsourcing process by collaborating with the designated annuity vendors on client account set-up and data migration
  • Ensure all annuity and maintenance fees are timely paid until annuity responsibility has transitioned to the client
  • Interact with foreign agents to ensure they are aware of the client’s annuity payment preferences
  • Review and confirm that all annuity related correspondence is processed according to the firm’s risk management procedures
  • Collaborate with clients to identify, establish, and maintain data integrity, to implement consistent internal processes and applicable database management in support of client and firm objectives
  • Review, research and resolve data discrepancy reports from the annuity vendors, foreign agents and clients as requested
  • Regularly audit annuity deadlines and information in Cooley systems for accuracy and completeness
  • Prepare client specific annuity reports
  • Confirm and transmit annuity payment instructions 
  • Reconcile payment confirmation reports and provide preliminary approval of invoices
  • Coordinate with the IP Client Transition Team to ensure annuity payment preferences are confirmed
  • Timely respond to client requests for budget information

International Patent Specialist (IPS) responsibilities:

  • Coordinate with IP professional staff and practitioners as well as clients and foreign associates, with respect to all international patent prosecution matters 
  • Monitor due dates and provide timely reminders to responsible attorneys/agents and clients. Responsible for meeting all assigned foreign due dates 
  • Prepare and file PCT applications, foreign direct applications, foreign national phase applications, foreign design applications, and foreign divisional applications
  • Examine all incoming PCT actions and ensure timely reporting, prepare responses to invitations, requests under 92bis, publications, article 19/34 amendments, chapter II demands, search reports, written opinions, POA’s, IPRP’s and other formal communications
  • Handle all foreign actions and reporting including formalities (e.g., POA’s, assignments, declarations, certified copies of formal documents, etc.), status checks, requests for examination, publications, voluntary amendments, responses to official actions, notices of allowance, issue fee payments, grant, and patent term extensions
  • Analyze correspondence received from USPTO, WIPO, foreign national patent offices, and foreign associates to ensure accuracy of information for docketing purposes
  • Sustain working knowledge of changes in international patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
  • Generate foreign prosecution cost estimates and patent prosecution budgets as requested
  • Conduct worldwide searches to create portfolio status charts as requested
  • Complete administrative tasks including request docket numbers, create new files, maintain client data rooms, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Review daily and weekly docket reports provided by the central IP Docketing Department. Provide detailed docket annotations related to upcoming dates on a daily basis 
  • Maintain double docket
  • Assist practitioners on all aspects of foreign filing and prosecution, as requested

Required:

  • Available to work overtime, as required
  • After orientation exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
  • 2+ years of experience in an IPS or equivalent role including direct responsibility for the tracking and payment of annuities, interacting with annuity vendors, and outsourcing responsibility for annuity payments
  • Experience researching IP status and history in PTO databases, including WIPO Patentscope, the EPO Patent Register, Hague Express database, as well as public databases in other jurisdictions
  • Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules

Preferred:

  • Bachelor’s degree



International Patent and Annuities Specialist

2+ years of experience in an IPS
Proficiency in the Microsoft Office suite, iManage and other firm applications
Experience researching IP status and history in PTO databases
Possess knowledge of USPTO rules, 37 C.F.R., MPEP rules.

Job Features

Job CategoryInternational Patent and Annuities Specialist

Seeking an International Patent and Annuities Specialist to join the IP Practice Services team.  Position summary: The International Patent and Annuities Specialist leads annuity outsourcing effo...View more

Full Time
West Coast, Chicago, Denver
Posted 3 weeks ago
  • IP Patent Prosecution Specialist

We are seeking a Patent Prosecution Specialist to join the IP Practice Services team.

Position Summary: The Patent Prosecution Specialist (PPS) is primarily responsible for providing specialized patent portfolio and diligence support to patent attorneys, agents, and clients. Specific duties include, but are not limited to, the following:

Position 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)

Skills & Experience

Required:

  • Available to work overtime, as required
  • After orientation, 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
  • Preferred:
  • Bachelor’s degree
  • Previous law firm experience     

Competencies

  • 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 

Job Features

Job CategoryIP Patent Prosecution Specialist

We are seeking a Patent Prosecution Specialist to join the IP Practice Services team. Position Summary: The Patent Prosecution Specialist (PPS) is primarily responsible for providing specialized paten...View more

Full Time
Boston, NY, DC, Chicago, Reston, Colorado, Polo Alto, San Diego, Seattle
Posted 3 weeks ago

Job Description

Seeking a IP International Patent Specialist (Quality Control) to join the IP Practice Services team.

Position Summary: The IP International Patent Specialist (Quality Control) is responsible for the quality control (QC) function for international patent filings.  The IPS (Quality Control) will provide full support to the patent attorneys, agents and clients in filing and maintaining international and foreign national applications and patents. Specific duties and responsibilities include, but are not limited to, the following:

Position Responsibilities:

QC responsibilities:

  • Coordinate with IP professionals and patent practitioners to review PCT filings, PCT response, Direct Filing instructions and International Design filings to ensure accuracy and completeness
  • Complete quality control checklists to ensure compliance with the firm’s risk management directives and best practices, as well as USPTO and international rules and regulations
  • Triage incoming international filings to be reviewed, prioritizing as necessary and communicating expected turnaround time to the IP professionals and practitioners

International Patent Specialist (IPS) responsibilities:

  • Coordinate with IP professional staff and practitioners as well as clients and foreign associates, with respect to all international patent prosecution matters
  • Monitor due dates and provide timely reminders to responsible attorneys/agents and clients. Responsible for meeting all assigned foreign due dates
  • Prepare and file PCT applications, foreign direct applications, foreign national phase applications, foreign design applications, and foreign divisional applications
  • Examine all incoming PCT actions and ensure timely reporting, prepare responses to invitations, requests under 92bis, publications, article 19/34 amendments, chapter II demands, search reports, written opinions, POA’s, IPRP’s and other formal communications
  • Handle all foreign actions and reporting including formalities (e.g., POA’s, assignments, declarations, certified copies of formal documents, etc.), status checks, requests for examination, publications, voluntary amendments, responses to official actions, notices of allowance, issue fee payments, grant, and patent term extensions
  • Analyze correspondence received from USPTO, WIPO, foreign national patent offices, and foreign associates to ensure accuracy of information for docketing purposes
  • Sustain working knowledge of changes in international patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
  • Generate foreign prosecution cost estimates and patent prosecution budgets as requested
  • Conduct worldwide searches to create portfolio status charts as requested
  • Complete administrative tasks including request docket numbers, create new files, maintain client data rooms, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Review daily and weekly docket reports provided by the central IP Docketing Department. Provide detailed docket annotations related to upcoming dates on a daily basis
  • Maintain double docket
  • Assist practitioners on all aspects of foreign filing and prosecution, as requested

Skills & Experience

Required:

  • Available to work overtime, as required
  • exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
  • 3+ years experience in an IP-related role

Preferred:

  • Bachelor’s degree
  • Previous law firm experience
  • Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
  • Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

Competencies

  • 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

Job Features

Job CategoryIP Patent Prosecution Specialist Quality Control

Job Description Seeking a IP International Patent Specialist (Quality Control) to join the IP Practice Services team. Position Summary: The IP International Patent Specialist (Quality Control) is resp...View more

Full Time
West Coast, Chicago, Denver
Posted 3 weeks ago

Job Description

Seeking a IP International Patent Specialist (Quality Control) to join the IP Practice Services team.

Position Summary: The IP International Patent Specialist (Quality Control) is responsible for the quality control (QC) function for international patent filings.  The IPS (Quality Control) will provide full support to the patent attorneys, agents and clients in filing and maintaining international and foreign national applications and patents. Specific duties and responsibilities include, but are not limited to, the following:

Position Responsibilities:

QC responsibilities:

  • Coordinate with IP professionals and patent practitioners to review PCT filings, PCT response, Direct Filing instructions and International Design filings to ensure accuracy and completeness
  • Complete quality control checklists to ensure compliance with the firm’s risk management directives and best practices, as well as USPTO and international rules and regulations
  • Triage incoming international filings to be reviewed, prioritizing as necessary and communicating expected turnaround time to the IP professionals and practitioners

International Patent Specialist (IPS) responsibilities:

  • Coordinate with IP professional staff and practitioners as well as clients and foreign associates, with respect to all international patent prosecution matters
  • Monitor due dates and provide timely reminders to responsible attorneys/agents and clients. Responsible for meeting all assigned foreign due dates
  • Prepare and file PCT applications, foreign direct applications, foreign national phase applications, foreign design applications, and foreign divisional applications
  • Examine all incoming PCT actions and ensure timely reporting, prepare responses to invitations, requests under 92bis, publications, article 19/34 amendments, chapter II demands, search reports, written opinions, POA’s, IPRP’s and other formal communications
  • Handle all foreign actions and reporting including formalities (e.g., POA’s, assignments, declarations, certified copies of formal documents, etc.), status checks, requests for examination, publications, voluntary amendments, responses to official actions, notices of allowance, issue fee payments, grant, and patent term extensions
  • Analyze correspondence received from USPTO, WIPO, foreign national patent offices, and foreign associates to ensure accuracy of information for docketing purposes
  • Sustain working knowledge of changes in international patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
  • Generate foreign prosecution cost estimates and patent prosecution budgets as requested
  • Conduct worldwide searches to create portfolio status charts as requested
  • Complete administrative tasks including request docket numbers, create new files, maintain client data rooms, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Review daily and weekly docket reports provided by the central IP Docketing Department. Provide detailed docket annotations related to upcoming dates on a daily basis
  • Maintain double docket
  • Assist practitioners on all aspects of foreign filing and prosecution, as requested

Skills & Experience

Required:

  • Available to work overtime, as required
  • exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
  • 3+ years experience in an IP-related role

Preferred:

  • Bachelor’s degree
  • Previous law firm experience
  • Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
  • Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

Competencies

  • 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

Job Features

Job CategoryInternational Patent Specialist(IPS)

Job Description Seeking a IP International Patent Specialist (Quality Control) to join the IP Practice Services team. Position Summary: The IP International Patent Specialist (Quality Control) is resp...View more

Full Time
West Coast, Chicago, Denver
Posted 3 weeks ago

Job Description

  • IP US Filing Specialist

 Cooley is seeking an IP US Filing Specialist to join the IP Practice Services team. 

Position Summary: The IP US Filing Specialist (USFS) provides full support to patent attorneys, agents, and clients in filing and maintaining US applications and patents. Specific duties include, but are not limited to, the following

Position Responsibilities:
· Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters
· Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; forward all USPTO mail to Client Team and provide timely reminders of upcoming dates
· Prepare and review required documents for filing; upload of same with the USPTO all US patent prosecution filings, including applications, (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, issue fee payments, etc
· Prepare, file and report of US formalities (e.g., POAs, assignments, declarations, drawings), 
and non-substantive USPTO documents, such as filing receipts, publications, along with preparation of reminder letters to clients of upcoming deadlines
· Handle and report all substantive USPTO actions with input from Responsible Attorney, including preparing draft amendments/responses to official actions and notices to file missing parts, obtaining identified references, processing notices of allowance including attending to the Notice of Allowance Review Form in coordination with the Patent Prosecution Specialist and Patent Practitioner, addressing any inventorship/assignment issues, and preparing related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)
· Proof and forward Letters Patent to the client
· Provide client support for portfolio management, including accommodating client-specific reporting guidelines, and responding to client phone calls and/or emails relating to specific requests or reports
· Sustain working knowledge of US patent prosecution rules and recommend procedural modifications to accommodate changes as needed
· Maintain a secondary docket of due dates for each assigned client as outlined in the Patent Prosecution Policies and Procedures Manual · Review docket reports and provide detailed annotations related to upcoming dates daily 
· Complete administrative tasks including maintenance of client data rooms, responding to deadlines and changes to dockets, along with other communication with the central Docketing Department, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
· Communicate regularly with the assigned Patent Prosecution Specialist (PPS) regarding the timing of filing IDSs, as well as reporting any IDS filed to the client

Skills & Experience
Required:
· After orientation exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
· Available to work overtime, as required
· Relevant IP experience (See minimum years of experience requirement by level above)

Preferred:
· Bachelor’s Degree
· Previous law firm experience
· Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
· Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

Competencies
. 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 
 


Job Features

Job CategoryIP US Filing Specialist

Job Description  Cooley is seeking an IP US Filing Specialist to join the IP Practice Services team.  Position Summary: The IP US Filing Specialist (USFS) provides full support to patent attorneys, ...View more

Full Time
Boston
Posted 3 weeks ago

We are seeking an IP Practice Team Specialist  to join the IP Practice Services team.

Position Summary: The IP Practice Team Specialist (IP PTS) serves as the centralized point of contact responsible for providing high-level non-billable administrative practice management support to assigned IP practitioners. The IP PTS supports entire practice group and serves as the administrative liaison between clients and the firm.

Position Responsibilities:

Administrative and practice support:

  • Take initiative to handle/support non-billable functions of the IP practice groups allowing the practitioners to focus on business development and billable client work.
  • Key point of contact for senior attorneys and practitioners, perceptively anticipate their need, liaison between partners and others inside and outside the firm, e.g. communicate with clients as needed
  • Key administrative liaison for the integration of new practitioners
  • Proactively oversee new client engagement and conflicts checks, draft and finalize waiver letters.
  • Draft audit letters and support the audit letter approval process.
  • Coordinate with and assist client transition team with intake, transfer, and disengagement tasks, for example, communicating with foreign agents as needed.
  • Create and maintain client and partner reference guides in coordination with the client teams.
  • Provide transition support to departing practitioners including monitoring email and voicemail accounts post departure.
  • Oversee all aspects of practice group meeting preparation and logistics (e.g., agenda, conference rooms, catering, outlook invitations, presentation materials)
  • Support practitioners as needed to meet professional development requirements.
  • Arrange for and manage complex travel (domestic & international)

Billing and finance support:

  • Proactively keep the pre-bill review process moving to lessen the attorney’s workload and take responsibility of timely returning pre-bills to Accounting.
  • Work in partnership with Financial Services and client account specialists to compile reports and analyze data as needed.
  • Serve as the liaison between client and collections on special billing requirements, discrepancies, write-offs, and discounts as directed.
  • Request and analyze client billing charts and monitor client matter budgets.
  • Assist with the practice expense approval process.
  • Take initiative to process expense reimbursements.
  • Assist in the international invoice approval process, approve credit memos from international agents.

Prosecution support:

  • Monitor and maintain status charts for clients and practitioners to ensure prioritization and completion of timely filings; coordinate with the client service specialists and trademark paralegals, as appropriate regarding same; prepare reports of previous filings and upcoming deadlines.
  • Generate docket and status reports as needed.
  • Perform research and extract relevant IP information from official patent and trademark databases.

Business development and marketing support:

  • Coordinate and participate in specific initiatives related to client development efforts led by, and in conjunction with, members of the Marketing and Business Development team.
  • Prepare and maintain reports relating to pitches made to clients and potential clients as requested.

Special projects:

  • Conduct research for a variety of purposes, e.g., IP research on public and private databases, gather potential and current client information such as corporation/subsidiary information to update our records or for conflict checks, create a dossier for a partner or a client presentation
  • Centralized point-of-contact for opening all IP pro bono matters.
  • Tracking diligence projects

General responsibilities:

  • Act as a back-up to other IP PTS(s)
  • Maintain high standards for internal/external client service and quality control.
  • Champion and promote diversity, equity and inclusion to help drive positive change.
  • Prepare and deliver oral and written communications that are concise and convey tenacity, enthusiasm, and innovative thinking.
  • Consistently meet deadlines and effectively complete operational and project-based assignments
  • Adhere to IP principles, specific policies, procedures, and best practices.
  • Actively participate in team training sessions and meetings and provide appropriate feedback or topic ideas.
  • Immediately report all risk management-related concerns following proscribed risk reporting process
  • All other duties as assigned or required.

IP Practice Team Specialist Trainee designation (2+ years relevant IP experience):

The Trainee position carries out the same position responsibilities and functions as noted above; however, a Trainee’s work product is closely monitored by a supervisor or manager and the Trainee has a reduced volume of work or caseload. 

Non-Senior IP Practice Team Specialist designation (3+ years relevant IP experience):

The Non-Senior Specialist carries out the position responsibilities and functions noted above and demonstrates the ability to consistently manage a regular workload and work independently.

Senior IP Practice Team Specialist designation: (5+ years relevant IP experience):

The Senior Specialist carries out the position responsibilities and functions noted above.  In addition to performing the duties on this job description, a Senior IP Practice Team Specialist is expected to lead by example in support of team initiatives and best practices, to add value by taking on special projects/initiatives for the benefit of the Practice Team Specialist group and the IP Practice more broadly as directed by IP Leadership, and to participate in the training and mentoring of more junior colleagues.

Skills & Experience

Required:

  • After orientation exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
  • Available to work overtime, as required
  • Relevant executive administrative experience (See minimum years of experience requirement by level above)

Preferred:

  • Bachelor’s Degree

IP experience strongly preferred  

Job Features

Job CategoryIP Practice Team Specialist

We are seeking an IP Practice Team Specialist  to join the IP Practice Services team. Position Summary: The IP Practice Team Specialist (IP PTS) serves as the centralized point of contact respons...View more

Full Time
Colorado, Seattle, Palo Alto and San Diego
Posted 3 weeks ago

IP US Filing Specialist (Quality Control)

We are seeking an IP US Filing Specialists (Quality Control) to join the IP Practice Services team.

Position Summary: The IP US Filing Specialist (Quality Control) is responsible for carrying out quality control (QC) functions associated with US patent filings. The Specialist also carries out the full duties and responsibilities of a US Filing Specialist in providing full support to patent attorneys, agents, and clients in filing and maintaining US applications and patents. Specific duties and responsibilities include, but are not limited to, the following:

Position Responsibilities:

QC responsibilities:

  • Coordinate with IP professional staff and patent practitioners to ensure the accuracy, completeness, and timeliness of US patent filings
  • Complete quality control checklist to ensure compliance with the firm’s risk management directives and best practices
  • Triage incoming US filings to be checked, prioritizing as necessary and communicating expected turnaround to the filing USFS and practitioners

US Filling Specialist (USFS) responsibilities:

  • Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters.
  • Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; forward all USPTO mail to Client Team and provide timely reminders of upcoming dates
  • Prepare and review required documents for filing; upload of same with the USPTO all US patent prosecution filings, including applications, (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, issue fee payments, etc.
  • Prepare, file and report of US formalities (e.g., POAs, assignments, declarations, drawings),
  • and non-substantive USPTO documents, such as filing receipts, publications, along with preparation of reminder letters to clients of upcoming deadlines
  • Handle and report all substantive USPTO actions with input from Responsible Attorney, including preparing draft amendments/responses to official actions and notices to file missing parts, obtaining identified references, processing notices of allowance including attending to the Notice of Allowance Review Form in coordination with the Patent Prosecution Specialist and Patent Practitioner, addressing any inventorship/assignment issues, and preparing related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)
  • Proof and forward Letters Patent to the client
  • Provide client support for portfolio management, including accommodating client-specific reporting guidelines, and responding to client phone calls and/or emails relating to specific requests or reports
  • Sustain working knowledge of US patent prosecution rules and recommend procedural modifications to accommodate changes, as needed
  • Maintain a secondary docket of due dates for each assigned client as outlined in the Patent Prosecution Policies and Procedures Manual
  • Review docket reports and provide detailed annotations related to upcoming dates daily
  • Complete administrative tasks including maintenance of client data rooms, responding to deadlines and changes to dockets, along with other communication with the central Docketing Department, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Communicate regularly with the assigned Patent Prosecution Specialist (PPS) regarding the timing of filing IDSs, as well as reporting any IDS filed to the client

Skills & Experience

Required:

  • Available to work overtime, as required
  • 3+ years experience in an IP-related role

               Previous law firm experience

  • Direct responsibility for carrying out quality control functions associated with US patent filings
  • Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, Patent Center, TSDR), WIPO Patent scope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
  • Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

Competencies

  • 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

Job Features

Job CategoryIP Filing Specialist (Quality Control)

IP US Filing Specialist (Quality Control) We are seeking an IP US Filing Specialists (Quality Control) to join the IP Practice Services team. Position Summary: The IP US Filing Specialist (Quality Con...View more

Full Time
N/A
Posted 3 weeks ago

We are seeking an experienced patent Filing Specialist for their Bos, NY, DC, San Diego, Palo Alto, Reston, Seattle etc..  office. This position will provide specialized US patent prosecution support to attorneys, patent agents and patent technical advisors. Qualifications: Minimum of 5 years of domestic patent prosecution, patent legal secretarial and/or US Filing experience; advanced Microsoft Office (Excel, Word and PowerPoint); excellent spelling, proofreading and editing skills; high attention to detail; outstanding communication skills; ability to prioritize, multi-task and work under tight deadlines and have the desire to be an essential part of a busy practice as a team player. Candidates should possess knowledge and keep abreast of rules according to the 37 C.F.R. and MPEP; availability to work overtime as needed. A life sciences background and knowledge of Inprotech a plus.

Job Features

Job CategoryFiling Specialist-All Offices

We are seeking an experienced patent Filing Specialist for their Bos, NY, DC, San Diego, Palo Alto, Reston, Seattle etc..  office. This position will provide specialized US patent prosecution support...View more

Full Time
N/A
Posted 3 weeks ago

LEGAL LITIGATION ASSISTANT

ESSENTIAL DUTIES

  • Revises and finalizes a variety of legal documents from rough drafts to final pleadings; relays instructions to other staff and attorneys as directed by the supervising attorney
  • Assists with internal correspondence (requisitions, reimbursements, etc.) for attorneys
  • Prepares, maintains and confirms daily work calendars and schedule depositions, hearings, and meetings
  • Provide support in all facts of pre-trial preparations, and during trial.

QUALIFICATIONS

  • Training and Experience.
  • 5 to 7 years of legal assistance experience in a litigation practice.
  • Litigation experience filing in federal and state courts required.
  • Knowledge, Abilities and Skill.
  • Comprehensive knowledge of modern legal office practices and procedures.
  • Considerable knowledge of legal documents preparation, legal terminology and court procedures.
  • Comprehensive knowledge of MS office products, Word, Excel, PowerPoint, document production, Adobe Professional, redline comparisons, digital dictation.
  • Considerable knowledge of effective proofreading
  • Excellent oral and written communication skills.

Job Features

Job CategoryLitigation Assistant

LEGAL LITIGATION ASSISTANT ESSENTIAL DUTIES QUALIFICATIONS

Full Time
N/A
Posted 3 weeks ago

The Docketing Specialist is responsible for accurately reviewing correspondence and entering case details and due dates into the firm’s docketing database.

Summary of Duties and Responsibilities

  • Utilize knowledge of U.S. international patent, trademark, court rules and firm procedures to properly identify and assess docketing action types and due dates
  • Process incoming mail and docket due dates in the firm’s docketing system, as necessary, based upon confirmed USPTO/PTAB/TTAB filings and/or confirmation of instructions and filings from clients and foreign associates
  • Assist with the processing and reviewing of new, original, and transfer-in matters; entering complete and accurate data into docketing database
  • Ensure that all docketed items are addressed and cleared in compliance with established firm docket procedures
  • Identify discrepancies or problems with PTO correspondence, filings or other sources and seek appropriate resolution
  • Communicate timely and accurately with attorneys and legal support staff regarding docket matters and due dates
  • Utilize fax server system to accurately identify, docket and route incoming faxes
  • Provide coverage on holidays as assigned
  • Other duties as assigned.
  • Associate degree and 2-4 years of relevant experience required.

Qualifications

  • Associate degree and 2-4 years of relevant experience required.
  • Extensive knowledge of patent, trademark and litigation rules and procedures for the US and foreign countries
  • Knowledge of Computer Packages, Inc. (CPi) a plus
  • Ability to process computer data; format and generate reports, experience processing new client/new case intake projects
  • Demonstrated proficiency in Microsoft Office Suite
  • Detail-oriented and extremely accurate
  • Ability to work well without direct supervision
  • Must have the ability to work well under pressure, meet frequent deadlines, and prioritize multiple tasks
  • Excellent organizational skills and ability to efficiently handle multiple tasks
  • Excellent oral and written communication (including spelling and grammar) and interpersonal skills are required
  • Flexible attitude and the ability to deal well with changing assignments and priorities; willingness to learn and acquire advanced duties, and provide support to varied office members.

Firm Competencies with Behavioral Statements

Customer/Client Service

(includes external and internal customers as applicable)

  • Responds to customer/client requests in a professional manner
  • Identifies and responds to customer/client issues/problems in a timely manner and seeks feedback/follow-up as appropriate
  • Builds effective working relationships as appropriate

Firm Knowledge

  • Demonstrates knowledge of the firm’s culture, practices, business, and structure
  • Demonstrates knowledge and adherence to basic firm policies, procedures, and processes

Initiative

  • Takes initiative beyond routine responsibility
  • Seeks out and accepts new responsibilities
  • Seeks development opportunities to enhance skills

Accountability

  • Owns mistakes and takes corrective action
  • Meets work deadlines as assigned
  • Meets firm standards for attendance and punctuality
  • Meets deadlines for all required firm processes, including time-sheets and other financial documentation

Work Management

  • Works well independently
  • Demonstrates dedication to producing quality work products
  • Pays attention to detail when completing work assignments
  • Organizes and prioritizes workload appropriately
  • Utilizes resources appropriately to complete work in the most efficient manner
  • Cooperates and demonstrates flexibility when facing change

Communication

  • Interacts effectively and courteously, in person, by telephone, and in written correspondence with attorneys, supervisors, coworkers, and other business professionals
  • Proactively communicates the status of work
  • Understands the need to ask questions and seek guidance
  • Expresses thoughts clearly, accurately, and concisely, both verbally and in writing
  • Maintains confidentiality of firm, client, and coworker information
  • Refers issues to firm leadership as necessary

Teamwork

  • Builds effective relationships with coworkers
  • Participates and contributes fully as a team member
  • Backs up other team members as needed

Technology

  • Utilizes available technology to carry out job responsibilities
  • Determines most appropriate technology to accomplish a given task
  • Seeks ways to utilize technology to improve efficiency

Adaptability

  • Looks for ways to make changes work rather than only identifying why change will not work
  • Exhibits flexibility in cross-training; learns new procedures in a timely manner; adjusts to changes in routine, assignments, and firm/client needs; and continues to be productive
  • Makes suggestions for increasing the effectiveness of changes
  • Shows willingness to learn and accept new tasks, processes, and technologies
  • Shifts strategy or approach in response to the demands of a situation

Working Conditions & Physical Requirements

  • General office environment with standard office equipment available. Lighting and temperature are adequate. Environment may be occasionally noisy due to open work area.
  • May require frequent overtime and occasional local and overnight travel as necessary.
  • Work requires limited supervision.
  • Work is sedentary in nature with constant sitting, but may require occasional standing, walking, bending, crouching, kneeling, reaching, lifting, carrying, balancing, and grasping of boxes/files/materials. Weight required to lift, carry, push/pull would not exceed 20 lbs.
  • Requires constant typing and use of a computer.
  • Must be able to read, write, and communicate fluently in English.
  • Must be able to see and read a computer screen and printed material with or without vision aids.
  • Must be able to hear and understand speech at normal levels and on the telephone and speak in audible tones so that others may understand clearly in person and on the telephone.
  • Requires occasional to frequent communication (in person, on the phone, email and/or via video conference) with all levels of firm personnel and external parties that have business with the firm (vendors, etc.), including the ability to participate in and/or present at small and large group meetings, respond to inquiries and/or provide training in both group and individual settings, and participate in other interactions in fulfillment of job duties. Must be able to exchange accurate information in these situations.
  • May require occasional availability to work outside of normal business hours; expected to work the hours necessary to fulfill the responsibilities of the position.
  • Environment may be occasionally stressful, working with tight deadlines, interaction with all levels of firm personnel, upset or frustrated personnel, extreme accuracy required.

Job Features

Job CategoryIP Docketing Specialist FHG

The Docketing Specialist is responsible for accurately reviewing correspondence and entering case details and due dates into the firm’s docketing database. Summary of Duties and Responsibilities Qua...View more