IP Patent Prosecution Specialist (Quality Control)

Cooley is seeking an IP Patent Prosecution Specialist (Quality Control) to join the IP Services team.The hours for this role will be: 9a - 6p PT or 10a - 7p MTHybrid Schedule Philosophy: As part of the Cooley culture, we recognize and appreciate the value of being together, in person, to build comradery with others in the office and to be a contributing member of the Cooley office. However, we also appreciate the benefits and flexibility that come from remote working. As such, the default assumption for employees and partners is a hybrid schedule: some in-office presence and some work from home days. Employees on a hybrid work schedule must work from their regular state of residence during hybrid remote days and are expected to be within a commutable distance of a Cooley office. (Department director or manager will provide direction on your schedule and any in-office expectations).Position summary: The IP Patent Prosecution Specialist (Quality Control) is responsible for carrying out quality control (QC) functions associated with IDS filings. The Specialist also carries out the full duties and responsibilities of a Patent Prosecution Specialist in providing specialized support for Information Disclosure Statement (IDS) and Section 18 work, prosecution and diligence support, and other billable patent projects. Specific duties and responsibilities include, but are not limited to, the following:Quality Control responsibilities:Coordinate with IP professionals and patent practitioners to review IDS filings and ensure accuracy and completenessComplete quality control checklists to ensure compliance with the firm’s risk management directives and best practices, as well as USPTO and international rules and regulationsTriage incoming IDS filings to be reviewed, prioritizing as necessary and communicating expected turnaround time to the IP professionals and practitionersProvide late filing assistance and extended coverage for other PPS team membersInformation Disclosure Statement (IDS) and prosecution support:Oversee IDS management for assigned client patent portfoliosReview daily and weekly custom PPS docket reports and update notes in Inprotech eventsCreate 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 referencesMonitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art referencesPerform pre-examination, examination, and post-allowance IDS reviewsAssist with re-examination petitions to include organization of prior art for IDS’sProvide foreign associates with prior art lists to fulfill information requirements for jurisdictions such as Israel, in order to ensure complete disclosure of relevant referencesRegularly monitor USPTO Patent Application Information Retrieval (PAIR) and other databases to verify status of client patent assets and, upon request, competitor patent assetsIndependent docket review, and IDS workflow coordination with the client service team with respect to meeting upcoming deadlinesConduct Patent Term Adjustment (PTA) reviews, prepare Letters of Candor and/or Requests for Reconsideration, as requiredDiligence, searches and other projects:Assist with diligence projects and chain-of-title research/assignment issuesConduct patent searches using various firm-subscribed databases and public data and prepare and update monitoring spreadsheets upon requestPrepare patent family trees in VisioPrepare and maintain patent portfolio status chartsRespond to requests from clients’ auditors for audit letters and follow internal audit letter proceduresPerform 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)Assist with US and foreign name change projects, as directedSkills and experience:Required:Available to work overtime, as requiredAfter orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications3+ years experience in an IP-related rolePreferred:Bachelor’s degreePrevious law firm experienceExperience researching IP status and history in PTO databases, including USPTO systems (PatentCenter), WIPO Patentscope, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictionsPossess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rulesCompetencies:Excellent attention to detailStrong verbal and written communication skillsAbility to organize, prioritize and coordinate multiple activitiesStrong judgmentTeam-player with collaborative spiritUnwavering ability to handle and maintain confidentiality regarding firm information, projects, client data (if applicable)High level of professionalism at all timesCooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.The expected hourly pay range for this position with a work schedule of 40 hours per week is $43.50 - $63.00 ($90,480.00 - $131,040.00 annually). Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate.We offer 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. We provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources. #J-18808-Ljbffr