Patent Prosecution Legal Assistant

Job Description

. This position will support all types of domestic and foreign patent matters and will operate as part of a team of attorneys and support staff across all offices to provide a high level of service to both attorneys and clients. MUST HAVE 2+ years IP experience . This is a full-time position that requires in-office presence five days a week and will report to the Manager of Patent and Trademark Services.

ESSENTIAL JOB FUNCTIONS:

• Prepares and files U.S. Patent and Trademark Office (“USPTO”) documents and communications, including but not limited to new U.S. utility and design applications, continuation/continuation -in-part/divisional applications, PCT international applications, formal drawings, substitute specifications (including marked-up and clean versions), Office Action responses, petitions for extension of time, Information Disclosure Statements with accompanying documents, powers of attorney, declarations, assignments and related ownership transfers, requests for corrected filing receipts, supplemental application data sheets, responses to the USPTO notices, issue fee payments, certificates of correction, maintenance fees, etc.

• Corresponds with the foreign associates and attends to foreign requirements specific to each country.

• Orders certified copies of priority documents and certified copies of recorded assignments from the USPTO. Obtains published applications and patents from the USPTO and foreign patent databases. Tracks chain of title in applications and has the ability to perfect same. Entering citations in CPI-IDS Module.

• Reviews and reports interim communications received from the USPTO, such as the Filing Receipts, Notice of Acceptance of Application, Notice to File Missing Parts, Office Actions, etc. Reviews and updates the status of the patent application with the USPTO.

• Assists attorneys with preparing budgets and cost estimates for clients. Prepares and maintains patent status reports. Reviews, confirms and saves incoming correspondences from the clients and foreign associates, follows-up with the clients for instructions, signed documents, etc. Opens new client-matter numbers. Maintains and updates the patent prosecution files in the electronic records management systems. Assists attorneys with invoices and expense reports.

• Assists with the domestic and foreign patent annuities that the firm is handling. Keeps current on domestic and foreign rules regarding annuity payments.

• Monitors and maintains the patent prosecution docket. Assists with the patent prosecution docketing coverage in CPI, as needed.

• Supports the patent prosecution department with general administrative duties and special projects, as needed.

• Assists with incoming and outgoing patent portfolio transfers.

KNOWLEDGE/SKILLS REQUIRED:

• Knowledge of both U.S. and foreign patent prosecution.

• Proficient with USPTO electronic filing system.

• Proficient with electronic research tools such as USPTO, WIPO and foreign patent databases.

• Experience with Intellectual Property docketing systems, such as CPI.

• High level of proficiency with document management and word processing software including Microsoft Office Suite applications, iManage and Adobe Acrobat.

• Strong organizational and time-management skills.

• Excellent oral and written communication skills.

• Availability for overtime as required.

INTERPERSONAL SKILLS REQUIRED:

• Ability to work efficiently under pressure and tight deadlines.

• Ability to manage complex patent portfolios with numerous deadlines.

• Respectful to other individuals working directly or indirectly with them.

• Reliable and dependable team player who can adapt quickly to new situations.

• Very detail-oriented with the ability to plan, organize, and prioritize.

• Willingness and ability to multi-task daily responsibilities is essential.

• Maintain confidentiality of client information.

• Work independently, taking initiative to move projects to conclusion.