Patent Specialist

6 days ago

Los Angeles, California, United States D3 Search Full time
Patent Practice Specialist II

D3 Search is actively recruiting a highly skilled Patent Practice Specialist II to support life sciences and healthcare IP attorneys, patent agents, and paralegals in all aspects of patent prosecution.

Key Responsibilities:
  • Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, and track one applications.
  • Review, process, and act upon all incoming USPTO communications.
  • Prepare and file documents with the USPTO, including responses to USPTO pre-examination formalities notices, corrective documents, responses to Office Actions, e-terminal disclaimers, AFCP 2.0 requests, requests for continued examination, and notice of appeals.
  • Track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms.
  • Prepare, send, and track formal documents to inventors/clients for signature.
  • Prepare and file documents related to sequence listings.
  • Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and file certificates of correction, review and proof certificates of correction.
  • Prepare client patent portfolio summary reports.
  • Contact the USPTO regarding the status of applications.
  • Prepare and file PCT applications.
  • Review, process, and act upon all incoming PCT communications.
  • Prepare and file with US Receiving Office or International Bureau rule 92bis requests, responses to Invitations from the RO or IB, article 19 and 34 amendment and demands, etc.
  • Prepare, coordinate, and send instructions to foreign counsel on direct and/or national stage filings.
  • Monitor and follow-up with foreign counsel on deadlines to ensure timely completion and filing of outstanding actions.
  • Coordinate with outside vendors and foreign counsel to ensure appropriate legalization through completion of filing.
  • Prepare cost estimates for filing of foreign applications.
  • Review and proof, when applicable, patent certificates and forward to clients.
  • Submit conflict checks and open new matters, including preparation of engagement letters and management of client and case documents.
  • Ensure that client matter numbers are opened according to the Firm's guidelines.
  • Maintain working knowledge of client guidelines, procedures, and preferences. Prepare filing documents and client correspondence in alignment with these procedures.
  • Review actions entered by the Docketing team for accuracy and inform Docketing of any discrepancies.
  • Review and manage assigned dockets.
  • Monitor deadlines, and follow-up with attorneys, agents, and paralegals in a timely manner.
  • Prepare and distribute docket or status reports as directed.
Requirements:
  • A minimum of 3-5 years of patent prosecution experience in a law firm.
  • Strong knowledge of U.S., PCT, and foreign patent rules and procedures.
  • Strong working knowledge of filing in USPTO Patent Center and preparing and/or filing in WIPO ePCT.
  • Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
  • Ability to work independently and within a team environment.
  • Possess excellent spelling, grammar, and punctuation skills.
  • Strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines.
  • Clear and concise communication skills.
  • Ability to work overtime, evenings, and weekends, as needed.
  • Experience working with life science clients and US and foreign requirements for sequence listing submissions is preferred, but not required.
Benefits:

Comprehensive & robust health benefits package, generous PTO, 401K, paid parking onsite, continuing education contributions and many other employee-centered perks, etc. Highly collaborative, collegial and supportive work environment.

If interested in this full-time/direct hire Patent Practice Specialist II role with D3 Search, and you meet the above qualifications/requirements, please contact Don Moser at D3 Search.

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