Intellectual Property Specialist

About the job -

Essential Job Requirements

Primary Responsibilities

• Applying detailed knowledge of patent prosecution, manage all aspects of administrative patent prosecution support for U.S. patent matters of assigned clients.
• Develop and maintain strong relationships with assigned clients to deliver responsive and appropriate client service. Anticipate future requests based on understanding of client business needs.
• Maintain manual calendar (Redbook) and review electronic docket for assigned clients; proactively communicate with and remind practitioners of due dates; review daily dockets and attend to pertinent entries with docket department.
• Utilizing expertise of the patent practice and adhering to USPTO procedures and firm policies and protocols, prepare aesthetic and accurate U.S. applications and file electronically through EFS-Web and Patent Center.
• In support of managing client portfolios, process incoming correspondence related to U.S. patent prosecution and timely report USPTO correspondence to clients within firm reporting standards.
• Utilize in-depth knowledge of U.S. patent rules and requirements to work with practitioners in responding to office actions and completing formalities while providing all materials and support as needed. Research and provide accurate responses with pertinent information by researching via appropriate resources, including but not limited to internal databases and records in conjunction with external specialized patent resources such as PAIR/Patent Center and WIPO.
• Monitor and ensure all deadlines are met, following up internally and externally as necessary.
• Apply specialized knowledge of client preferences to assemble, establish, maintain, and adhere to specific guidelines for assigned clients and documenting same.
• Respond to client inquiries regarding routine patent portfolio matters and provide status reports to clients upon request.
• Provide back-up support for colleagues to complete overflow work.
• Proactively mentor and regularly assist with training junior staff in department.
• File documents and emails relating to U.S. patent prosecution.
• Open electronic files for new applications and submit data change requests accordingly.
• Assist with initiating client file transfers and disengaging clients.
• Review vendor invoices for assigned clients and process for payment by accounting.

Education and Experience

• Bachelor’s degree, paralegal certification, or the equivalent in experience
• A minimum of 2 years of progressive patent experience required.

Teamwork and Applied Skills

• Ability to take an assignment from inception to completion with minimal supervision or by following broad guidelines to deliver positive results.
• Detailed and advanced knowledge of USPTO procedures and keeps abreast of 37 C.F.R. and Manual of Patent Examining Procedure (MPEP) rules.
• Detailed and advanced knowledge of the USPTO website, including PAIR, Patent Center, EFS-web, EPAS and related websites.
• High level of accuracy, attention to detail, and excellent proofreading skills to deliver a zero-defect work product.
• High client service ethic and a proven record in delivering exemplary client satisfaction to external and internal client constituencies.
• Excellent communication, grammar, spelling, written English composition and math skills.
• Strong organizational skills including the ability to work under pressure and handle competing deadlines while prioritizing workload effectively.
• Ability to establish good working relationships and resolve concerns constructively, directly, and respectfully.
• Ability to assess risk management issues and understanding when to seek appropriate assistance.
• Demonstrates integrity and honesty in all matters
• Proficient in essential software programs related to functions (i.e., Inprotech, First to File, eDocs, etc.); MS Word and Outlook. Basic knowledge of MS Excel and MS PowerPoint.
• Strong technical aptitude and understanding, including ability to quickly learn new applications.
• Availability to work overtime and flexibility regarding work schedule required.