Patent Specialist

Position Overview

The Patent Prosecution Specialist will be responsible for supporting activities related to patent prosecution in robust patent group, including the preparation and filing of documents with the United States Patent and Trademark Office, and various administrative duties relating to our patent practice and assigned attorney/attorneys.

Responsibilities

• Demonstrate proficiency in all areas of patent prosecution including pre-examination, examination, pre-issuance and issuance while possessing a strong knowledge of USPTO rules in accordance with 37 CFR and MPEP.

• Provide clients and foreign agents with application requirement documents. Support Attorneys and Agents in the review, preparation and filings of New Application including Utility, Provisional, Continuation, Divisional, and National Stage in accordance with set guidelines and procedures. Preparation of Filing of Information Disclosure Statements including applicable certifications and fees in accordance with U.S. Patent Office guidelines. Ensure timely reporting of all Patent Office submissions.

• Review and report pre-examination communications from Patent Office including Official Filing Receipts, Notice of Publications, Notice of Acceptance, Notice of Recordation, Informational Notices to Applicant, Notice to File Missing Parts, Notice to File Corrected Application Papers, and Notification of Missing Requirements. Communicate with the U.S. Patent Office Application Assistance Unit for inquiries specific to issued pre-examination communications or conduct general inquiry of case status. Support Attorneys and Agents in the filing of corrections to pre-examination communications as necessitated.

• Review examination communications from the U.S. Patent Office including Restriction Requirements, Non-Final and Final Office Actions, Ex parte Quayle Actions, and Advisory Actions. Support Attorneys and Agents in the timely reporting and analysis of examination communication to clients including foreign agents. Support Attorney and Agents in the drafting of responses to examination communications. Finalize and prepare e-filings to the USPTO Patent Center including the appropriate USPTO transmittal forms and fees.

• Review pre-issuance communications from the U.S. Patent Office including Notice of Allowances. Support Attorney and Agents in final audit of prosecution history for reporting to client. Support Attorney and Agent in timely payment of Issue Fees. Assist in Requests for Recomputations of Patent Term Adjustment. Review and report Issue Notifications and Letters Patent to Client. Support Attorneys/Agents in the filing of Certificate of Corrections.

• Support Attorney’s and Agents in the monitoring and clearance of daily docket, weekly and monthly dockets.

Essential Job Specifications/Qualifications

To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the knowledge, skill, and/or ability required.

• Act as a point of contact of clients, ensuring accuracy and completeness of information.

• Ability to apply problem solving skills and the ability to work under minimal supervision.

• Ability to pay close attention to detail.

• Ability to deal professionally with all levels of clients, both internally and externally as well as international clients.

• Ability to maintain confidence and handle client confidential information.

• Ability to manage and take ownership of numerous tasks simultaneously.

• Strong organization skills with the ability to independently organize large amounts of information, for easy filing and retrieval.

• Excellent computer skills and use of docketing systems.

• Provide back-up support to team and project assistance as needed.

• Ability to work overtime when necessary.

• Requires the ability to regular report to work on the days and times scheduled.

Supervisory Responsibility

This position has no supervisory responsibilities.

Travel

This position has little to no travel.

Education/Experience/Certifications

• Bachelor’s degree

• Minimum of 7 years experience managing patent portfolios, including applications, invoices and payments required.

• Experience with World Intellectual Property Office International Bureau and foreign national patent offices in accordance with set guidelines and procedures, and preparation and filing of documents related to international and foreign national patent applications preferred.

NOTE: Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

Pursuant to the Washington D.C. pay transparency laws, BCLP is posting a reasonable estimate of a compensation range for this position. At the time of posting, the estimated Washington D.C. range is $72,000 to $105,000. Actual compensation will be influenced by various factors, including but not limited to the level of relevant experience, skill sets, training, licensure and certifications, internal equity, market data, and other job-related factors permitted by law. The range is based on a full-time work schedule. Additional compensation may include an annual discretionary bonus

Disclaimer:

The above statements are intended to describe the general nature and level of work being performed by the incumbent in the position. They are not intended to be an exhaustive list of all responsibilities, duties and skills of the employee. Duties and responsibilities may change at any time with or without notice.

BCLP is an equal opportunity employer

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