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Patent Prosecution Specialist

4 months ago

Washington, United States Ultimate Staffing Full time

The Patent Prosecution Specialist will be responsible for support activities related to patent prosecution, 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.

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Responsibilities

  • Preparation of patent prosecution documents, including transcribing instructions (written and/or verbal), producing patent applications, correspondence, reports, memoranda, proofreading and redlining, photocopying, assembling and distributing
  • Review and process Filing Receipt, Notice of Recordation, Office Actions, Notices of Allowance, Recordation of Assignment, Letters Patent, and Notice of Publication in accordance with set guidelines and procedures
  • Prepare pre-issuance documents, which includes Issue Fee Payments, and Requests for Recomputations of Patent Term Adjustment
  • Prepare and file the documents with the USPTO, including Request for Filing Receipt, Request for Corrected Filing Receipt, Issue Fees, Formal Drawings and New Patent Applications
  • Review and process examination Actions issued by the U.S. Patent Office and conduct accuracy analysis
  • Preparation of the appropriate drafts in response to Actions in accordance with set guidelines and procedures.
  • Prepare Inventor Declaration, Assignment and Power of Attorney
  • Review patent files for processing and preparation
  • Prepare IDS from international and foreign search reports
  • Prepare client reporting letters and/or correspondence to the foreign associates regarding IDS, foreign disclosures, etc.
  • Analyze PTO-issued documents for accuracy (such as filing receipts, assignment documents, office actions, etc.)
  • Provide copies of documents filed to client
  • Monitor patent docket
  • Contact PTO with status questions
  • Contact patent examiner regarding missing information
  • Make arrangements with draftsman to correct drawings as necessary
  • Prepare and file international/foreign national documents, including PCT Requests and PCT Demands, Responses to PCT Application inquiries and invitations and National phase application order letters
  • Possess knowledge of and keep abreast of rules according to the 37 CFR and MPEP
  • Oversee opening of new patent prosecution matters

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

All qualified applicants will receive consideration for employment without regard to race, color, national origin, age, ancestry, religion, sex, sexual orientation, gender identity, gender expression, marital status, disability, medical condition, genetic information, pregnancy, or military or veteran status. We consider all qualified applicants, including those with criminal histories, in a manner consistent with state and local laws, including the City of Los Angeles' Fair Chance Initiative for Hiring Ordinance.