IP Specialist

4 weeks ago

Philadelphia, Pennsylvania, United States DLA Piper Full time
Job Summary

The IP Specialist will provide administrative and patent prosecution support to our prosecution practice group. This role involves preparing and finalizing documents for patent applications, recording assignments, and assisting in drafting correspondence to clients.

Key Responsibilities
  • Prepare and finalize documents for patent applications, including provisional, non-provisional, and PCT applications.
  • Record assignments with the US Patent Office and file declaration and power of attorney documents.
  • Assist in drafting correspondence to clients regarding the status of applications and patents.
  • Prepare and file responses to corrected applications papers, request for corrected filing receipts, and updates to applicants and inventors.
  • Prepare and file response to restriction requirements along with preliminary amendments.
  • Prepare office action response shells and letters to clients reporting office actions along with pending claim sets.
  • Review and manage docket for U.S. and foreign deadlines, understanding docket and deadlines and action needed on each file.
  • Review files and prepare information disclosure statement and accompanying documents.
  • Contacts outside vendors to follow-up on drawings, translations, certified copies, etc., for filing with the Patent and Trademark Office.
  • Retrieve information from USPTO website and other internet research.
  • Overall support for all aspects of portfolio management.
  • Stay current and compliant with MPEP and CFR rules and administrative changes at the USPTO.
  • Perform conflict checks and open new matter numbers for clients.
  • Prepare new client engagement letters.
  • Prepare conflict waiver letters.
  • Assist attorneys with time entries (Webview), expense reports, and invoice approvals.
  • Assist attorneys with other administrative tasks or special projects as needed.
Requirements
  • Must have experience filing with the USPTO as well as knowledge of USPTO rules and practices, including docketing, public/private PAIR, US prosecution and formality requirements.
  • Must be a self-starter and have excellent communication, writing, and organizational skills, including keeping attorneys and patent agents on track through overseeing the docket and taking a proactive approach.
  • Individual should have proven administrative abilities, excellent judgment, and the ability to handle multiple time-sensitive tasks in a fast-paced environment.
  • Punctuality is a must.
  • Candidate must be able to work independently, as well as be a team player.
  • Strong computer skills are required, including Microsoft Word, Excel, and Outlook.
  • Knowledge of law firm billing programs (Webview) and patent docketing software (OP Solutions Pattsy) is helpful.
Education and Experience
  • High School Diploma or GED.
  • Minimum 3 years' experience of office/administrative experience in a professional services and/or legal industry.
  • Patent prosecution experience is highly preferred.
Job Expectations
  • Effectively communicate, verbally and in writing, with clients, lawyers, business professionals, and third parties.
  • Produce deliverables, answer phone calls, and reply to correspondence in an efficient and responsive manner.
  • Provide timely, accurate, and quality work product.
  • Successfully meet deadlines, expectations, and perform work duties as required.
  • Foster positive work relationships.
  • Comply with all firm policies and practices.
  • Engage in both physical and sedentary activity, such as working at a computer for extended periods of time, including on-screen reading and typing.
  • Ability to work under pressure and manage competing demands in a fast-paced environment.
  • Perform all other duties, tasks, or projects as assigned.

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