Patent Specialist

The U.S. Patent Prosecution Specialist will, with minimal guidance, perform complex and specialized work by providing patent prosecution administrative support to assigned clients. A key component of the position is to provide support for portfolio management, prepare and submit papers to the U.S. Patent and Trademark Office (USPTO), correspond with clients and provide status updates, manage departmental deadlines and personal docket, and monitor and update workflows for assigned clients. In addition, the U.S. Patent Prosecution Specialist will ensure compliance with policies and procedures implemented by the client and Firm and support the IP Department to ensure client service and satisfaction are achieved throughout all assigned responsibilities.

PRINCIPAL DUTIES AND RESPONSIBILITIES*

• Prepare and electronically file documents at the U.S. Patent and Trademark Office (hereinafter “USPTO”), including applications, preliminary/312 amendments, response to notices, petitions, information disclosure statements, issue fees, etc.
• Prepare basic patent documents for client execution and file same at the USPTO, including declarations, assignments, powers of attorney, etc.
• Prepare and forward reporting letters to clients regarding USPTO communications, such as Formalities Notices. Also, prepare and forward reporting letters to clients regarding USPTO filings.
• Prepare and forward reminders to clients regarding due dates and instructions.
• Review application papers being filed in the USPTO for accuracy and completeness regarding inventors, assignees, priority data, etc.
• If applicable, enter time and the billing description for completed tasks.

Knowledge/Skills/Abilities:

• Knowledge of current U.S. prosecution and U.S. Patent laws and rules preferred.
• Knowledge of USPTO online sites and related websites.
• Ability to meet or exceed departmental quality and quantity standards per the Patent Prosecution Department Guidelines.
• Strong sense of accountability, taking ownership over projects and responsibilities and resolving issues proactively.
• Ability to work independently and meet deadlines, including demonstrated ability to work on multiple projects with often competing deadlines.
• Proven problem-solving skills and good judgment under pressure.
• Ability to resolve issues and concerns proactively, constructively, directly and respectfully.
• Ability to assess risk management issues and understanding when to seek appropriate assistance.
• Demonstrate a positive, service-oriented attitude and a commitment to teamwork.
• Respect for confidentiality of client information.
• Ability to accurately interpret a variety of instructions furnished in written or oral form to synthesize complex and diverse information.
• Meticulous attention to detail, accuracy and thoroughness.
• Ability to communicate effectively with all levels of management, staff and timekeepers.
• Strong technical aptitude and understanding, including ability to quickly learn new software applications.
• Proficient in software applications related to functions of position, including Word and Outlook; basic knowledge of Excel and PowerPoint preferred; some knowledge of docketing database preferred.
• Reliability, flexibility and dependability are essential.

Education

• Minimum four-year college degree. Related work experience may be used in lieu of formal education.

Experience

• Minimum of two years of experience in patent prosecution.