Patent Specialist
2 months ago
The Patent Specialist will provide support on both US patent and foreign prosecution. They will provide assistance on patent matters with a focus on US and PCT filings, deadline management, special projects and National Phase filings. The patent specialist will operate as part of a team under the supervision of attorneys, collaborate with peers, assume ownership of their assigned tasks and workload, and provide a high level of service to internal and external clients.
ESSENTIAL JOB FUNCTIONS:
- Provide US patent prosecution support in all phases of patent prosecution and collaborate closely with attorneys, patent specialists, paralegals, and clients.
- Prepare, coordinate review and file US and PCT patent applications, responses, and issue fees, electronically and paper as necessary; prepare supporting documents such as U.S. formal documents, declarations, assignments, and powers of attorney.
- Draft correspondence to clients about the status of patent applications and patent matters.
- Report USPTO and PCT correspondence and notifications, including publications, recordation of assignments, office actions, IDS, Missing Parts, Petitions, Notice of Allowances and more.
- Ability to file PCT applications, including familiarity with WIPO system.
- Able to complete National Phase filings.
- Ability to correspond with Foreign Associates regarding various aspects of prosecution.
- Client portfolio management including preparing and maintaining client(s) status reports, charts and various client projects and tasks; act as a single point of contact for the client and provide assistance.
- Draft, file and report to client IDS and IDS reference management; utilize contracted resources as appropriate.
- Manage docket(s), monitor deadlines, communicate and follow-up with the appropriate parties to ensure deadlines and related activities are timely met.
- Reviews, organizes and timely files documents and emails in Firm's document management system iManage according to Firm protocols.
- Completes special projects as assigned.
- Performs any and all other duties as necessary and assigned.
- This role will also perform a variety of patent related administrative support
- Support client services to include preparing and processing client reports, coordinate client meetings or meet with client patent paralegals.
- Report filings and notifications to client through client portal.
- Review client proformas and make edits and finalize for attorney. Handle patent prosecution administrative tasks and/or route to others as appropriate.
- Maintain accurate daily time records for client billing and statistical purposes.
- Minimum of two years' experience as a patent prosecution paralegal, legal secretary or comparable position with experience working in a law firm or in house legal environment.
- Experience with Electronic Filing USPTO procedures.
- Excellent knowledge of USPTO and PCT rules and procedures
- Foreign patent prosecution experience working in a law firm or in-house legal environment in a legal assistant role or similar.
- High level of proficiency with technology including Microsoft Office Suite applications, Adobe Acrobat, U.S. Patent Office Electronic Filing System, Dialog and other internet research tools.
- Good working knowledge of timekeeping software (InTapp), iManage, FoundationIP, and Claim Master
- Excellent client service skills.
- Must be willing to collaborate with others and take on assignments.
- Ability to compose routine correspondence.
- Excellent organizational and time management skills, the ability to work independently, prioritize assignments and handle multiple projects simultaneously.
- Maintain confidentiality of client information.
- Should have ability to work in fast-paced environment.
- Ability to perform well under pressure.
- Respectful to other individuals working directly or indirectly with them.
- Reliable and dependable team player.
- Must be a good planner who is very detail-oriented and has the ability to organize and prioritize.
- Should be action and results-oriented.
- Must have effective written and oral communication skills.
- Ability to work independently and take initiative to move projects to conclusion.
- Must have sense of urgency relating to client requests and should be able to meet deadlines.
- Strong work ethic, flexible, dependable, and positive can-do attitude.
- Must be willing to adapt to change.
Selected applicants will be contacted. Kilpatrick is an Equal Opportunity Employer.
For more information about our firm, please visit our website at .
Kilpatrick Townsend & Stockton LLP is committed to equal employment opportunity for all persons, regardless of race, color, religion, sex or gender, national origin, age, veteran status, disability, sexual orientation, gender identity, or any other basis prohibited by applicable law.
Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities
The contractor will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed or disclosed their own pay, or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding , hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor's legal duty to furnish information. 41 CFR c)
Equal Opportunity Employer/Protected Veterans/Individuals with Disabilities
The contractor will not discharge or in any other manner discriminate against employees or applicants because they have inquired about, discussed, or disclosed their own pay or the pay of another employee or applicant. However, employees who have access to the compensation information of other employees or applicants as a part of their essential job functions cannot disclose the pay of other employees or applicants to individuals who do not otherwise have access to compensation information, unless the disclosure is (a) in response to a formal complaint or charge, (b) in furtherance of an investigation, proceeding, hearing, or action, including an investigation conducted by the employer, or (c) consistent with the contractor's legal duty to furnish information. 41 CFR c)
Estimated Salary: $20 to $28 per hour based on qualifications.
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