Patent Specialist

Our client is seeking a Patent Specialist with at least 2-6 years of experience to join their firm’s patent specialist team. This position has the option to be fully remote. Patent Specialists will report directly to the Patent Practice Manager. There are multiple openings available, with one being for later coverage from 11am to 7:30pm ET.

Specific Duties

The patent specialist will work closely with the firm’s attorneys to support a roster of assigned clients with navigating the entire patent application process from filing through grant, ensuring that all necessary paperwork and documentation are properly handled. These tasks/duties include:

• demonstrating knowledge of the entire patent lifecycle, including all applicable federal patent rules, regulations, and U.S. and international intellectual property laws (37 C.F.R, MPEP, PCT regulations, foreign country laws, etc.);
• working proactively, independently, and intuitively to manage all communications, filings, and documents for the specialist’s assigned clients, including assisting associated attorneys with docket and workload management;
• managing the lifecycle of U.S. and foreign patent applications from application filing to grant for all assigned clients, including but not limited to:
  • preparation and filing of patent documents and forms via the United States Patent and Trademark Office (USPTO) and World Intellectual Property Organization (WIPO) electronic systems;
  • preparation of response shells and review for potential IDS filings;
  • completing Notice of Allowance review and checklists;
  • preparing reporting emails to clients (or upload to specific client portals);
  • preparing formal documents and tracking receipt of executed documents from clients;
  • sending reminders to clients regarding upcoming deadlines and outstanding tasks;
  • preparing and reviewing appropriate correspondence from foreign associates and to clients regarding new applications, formal requirements, filing details, etc.;
  • verifying the completeness of instructions received from clients and request additional information where necessary; and
  • preparing responses to client inquiries or reporting the status of various cases.
• using knowledge of client preferences to provide custom practice support, including maintaining and closely following client and practice support procedures applicable to the specialist’s assigned client roster;
• periodically assisting with special projects as assigned, including large file transfers, assignment, and/or power of attorney projects;
• providing backup support and assistance to other patent specialists in the specialist’s “teaming pairs” and/or within the firm’s broader patent specialist team;
• using quality control measures, including use of spellcheck and checklists, to produce error-free work consistently and efficiently;
• reading, prioritizing, routing and follow-up on incoming client communications, including maintaining secondary docket of reporting, official, and client deadlines, and proactively coordinating with attorneys to address those deadlines;
• independently and efficiently prioritizing workflow, and maintaining an organized task schedule, including working in advance of deadlines;
• working collaboratively to keep the firm’s docketing department informed regarding the status of impending deadlines, and providing accurate and timely information to close deadlines;
• maintaining electronic files in accordance with firm standards, including storing a true copy of filings in electronic Worldox files; and
• using discretion when engaging with clients on behalf of the firm and its attorneys, as well as when communicating with all teammates and co-workers within the firm.

About You

• At least two years of recent patent legal secretarial experience in a law firm setting.
• Advanced Microsoft Office skills, typing at 65+ WPM, and impeccable attention to detail.
• Ability to multi-task, manage multiple priorities, and work in a team environment.
• Preferred but not required experience with Foundation IP, AppColl, Worldox, and/or Anaqua.
• Positive attitude toward service to the firm’s clients, attorneys, and co-workers.
• Self-starter with commitment to success and personal professional growth.
• Outstanding organizational, interpersonal and professional service skills (written and verbal).
• Enjoy being involved in all aspects of a growing and changing law firm environment.