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Patent Prosecution Specialist

2 months ago

San Diego, California, United States LanceSoft, Inc. Full time
Job Description

Job Title: Patent Prosecution Specialist

Job Summary:

LanceSoft, Inc. is seeking a highly skilled Patent Prosecution Specialist to join our team. As a key member of our intellectual property department, you will be responsible for managing patent prosecution matters, including preparing and filing patent applications, responding to office actions, and coordinating with internal and external stakeholders.

Key Responsibilities:

  • Prepare and file patent applications with the U.S. Patent and Trademark Office (USPTO) using ePCT
  • Manage all related prosecution documents for US and PCT applications
  • Correspond with foreign associates on foreign prosecution and timely report official correspondence
  • Work with internal attorneys, agents, and international law firms to respond to office actions, complete formalities, and provide all materials and support
  • Monitor and ensure all deadlines are met
  • Prepare and file various patent-related documents, including provisional, non-provisional, PCT, and design application transmittal papers
  • Coordinate and execute Assignments, Powers of Attorney, and Declarations
  • Manage all aspects of US, PCT, and foreign patent prosecution, including drafting formality documents, attending to document legalization, and complying with priority document requirements
  • Contribute to administrative projects to uphold the highest legal and ethical standards in the IP Department
  • Process patent-related emails from the IP team and US and foreign patent counsel
  • Update patent deadlines, enter commentary on their status, and remove completed deadlines upon confirmation of filing
  • Prepare, distribute, and update docket reports for attorneys/agents as requested
  • Collaborate with attorneys/agents to track and ensure timely compliance with deadlines
  • Develop best practices and job aids to maintain a high-functioning IP Department

Requirements:

  • Bachelor's degree and 3+ years of experience in the legal field and 3+ years of industry-specific legal experience
  • OR Paralegal Certificate and 3+ years of experience in the legal field and 3+ years of industry-specific legal experience
  • OR High School diploma or equivalent and 6+ years of experience in the legal field and 6+ years of industry-specific legal experience

Preferred Qualifications:

  • Outstanding oral and written communication skills and presentation capabilities as well as attention to details
  • Ability to manage multiple projects and work effectively as a team
  • Thorough knowledge of US and foreign patent prosecution, including deadlines and all forms of patent documents
  • Expertise with IP management system or other patent docketing databases
  • Expertise in using computer databases and web-based platforms
  • Ability to independently oversee patent docketing matters, patent prosecution and related projects, and work collaboratively with other personnel at LanceSoft, Inc.
  • Ability to handle multiple complex docketing matters and see projects through to conclusion
  • Familiarity with the USPTO website and other US and foreign patent internet sites and tools
  • Experience with Microsoft Office (especially Excel) and Adobe Acrobat Professional