Patent Specialist

Job Details

Description

Kilpatrick, a large international law firm, is seeking a Patent Specialist for our Intellectual Property Department in our Winston-Salem, Raleigh, Houston, Dallas Chicago, New York, Washington DC or Denver office. This position will be part of our team of attorneys, paralegals and support staff providing a high level of service to both internal and external clients. At Kilpatrick we are one team where each person plays an integral role in serving the needs of our clients. The firm has a strong dedication to its employees, values, diversity and inclusion initiatives and commitment to the community.

The patent specialist will provide support on US patent prosecution and patent matters with a focus on US and PCT filings, deadline management, and special projects. 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. 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. Review, organize and timely file documents and emails in Firm’s document management system iManage according to Firm protocols. Complete special projects as assigned. Perform 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 .

KNOWLEDGE/SKILLS REQUIRED:

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. 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.

This is a full-time, regular position with a multi-faceted health benefit package including medical, dental, and vision. The firm also offers life insurance, short term disability plans and retirement plans in addition to holidays and paid time off. The firm offers hybrid work schedules combining in office work days as well as remote work days. The pay range for this position in North Carolina only is $32.51 to $48.71 per hour; in Georgia, Texas, and Chicago only is $34.20 to $51.33 per hour; and in New YOrk, Washington DC and Denver only is $40.97 to $61.48 per hour.

Selected applicants will be contacted. Kilpatrick is an Equal Opportunity

Employer.

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