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Patent Prosecution Administrator

5 months ago

Boston, United States Fawkes IDM Full time

A well known law firm with offices in Boston, MA is seeking a full-time Patent Prosecution Administrator to join their team.


Responsibilities:

  • Coordinating U.S. and international patent application filing procedures with attorneys
  • Reviewing the docket to ensure that all deadlines are met appropriately
  • Determining, distributing, and ensuring compliance with client-specific procedures
  • Preparing formalities associated with USPTO (and/or international patent offices) filings
  • Drafting correspondence to client, foreign counsel, and others
  • Coordinating the integration of transferred-in cases into firm system
  • Remaining current in knowledge of USPTO rules and regulations and/or international practice
  • Opening new matters/new utility/new continuation/divisional/CIP matters
  • Processing invoices
  • Preparing and filing new U.S. and national stage applications, PCT applications, and responses in the USPTO as required by attorneys
  • Preparing monthly client reports; maintaining complete and accurate database tracking information as directed by client and/or attorneys

Requirements

  • Bachelor’s degree required
  • 8+ years of patent prosecution experience in a professional services environment; or, in lieu of a degree, a minimum of 9 years of patent prosecution experience in a law firm.
  • Demonstrated comprehensive knowledge and understanding of international and USPTO (U.S. Patent and Trademark Office) patent law rules, procedures and requirements, ability to navigate USPTO website (or various international patent offices’ websites), and knowledge of search tools for patent and trademark information are needed.
  • Must have strong experience with Electronic Filing USPTO and/or international procedures, ability to prepare and file new U.S. and national stage applications, new PCT applications, and other responses in the PTO as required, knowledge of Microsoft Office Suite and the ability to learn the systems and databases used by the IP operations department and the firm.
  • Solid experience with case/matter management and/or other database tools, expert research skills and proficiency in using various research tools, including the Internet and government websites, strong customer service skills, including writing and verbal communication skills. ability to be a self-starter, work under pressure, meet frequent deadlines, and prioritize multiple tasks, and a willingness to work overtime when necessary is required.