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Summary

The IP Specialist, working in collaboration with and in support of the firm’s strategic initiatives, will be responsible for providing administrative and patent prosecution support to our prosecution practice group.

Location

This position can sit in our Boston, New York, Northern Virginia, Short Hills, or Washington D.C. office and offers a hybrid work schedule. 

Responsibilities        
 

• Prepares and finalizes all documents needed to complete the filing of provisional, non-provisional and PCT applications.

• Prepares formal documents (assignment, declaration, power of attorney), obtains appropriate signatures, and follows-up as needed.

• Records assignments with US Patent Office. Files declaration and power of attorney documents.

• Assists in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates.

• Prepares and files responses to corrected applications papers, request for corrected filing receipts, updates to applicants and inventors (application data sheet).

• Prepares and files response to restriction requirements along with preliminary amendments.

• Prepares office action response shells and letters to clients reporting office actions along with pending claim set.

• Prepares and files response to office actions along with extensions of time, terminal disclaimers, declarations, exhibits, etc.

• Reviews and manages docket for U.S. and foreign deadlines, understands docket and deadlines and action needed on each file.

• Reviews files and prepares 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.

• Retrieves information from USPTO website and other internet research.

• Overall support for all aspects of portfolio management.

• Stays 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.

• Prepares conflict waiver letters.

• Assists attorneys with time entries (Webview), expense reports, and invoice approvals.

• Assists attorneys with other administrative tasks or special projects as needed.

• Other duties as assigned.
   

Desired Skills   

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 the attorneys and patent agents on track through overseeing the docket and taking a proactive approach. Individuals 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. Candidates 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) helpful.

Minimum Education                        

• High School Diploma.
   

Minimum Years of Experience  

• 3 years’ office/administrative experience in a professional services and/or legal industry. Patent prosecution experience highly preferred.

Essential Job Expectations

While the specific job requirements of a DLA Piper position may vary depending upon scope of the job and area of specialty, there are certain universal requirements that are expected of all DLA Piper employees, which include but are not limited to:
 

• 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 (a) working at a computer for extended periods of time, including on-screen reading and typing; (b) participating in digital/virtual conference calls; (c) participating in meetings as needed.

• Ability to work under pressure and manage competing demands in a fast-paced environment.

• Perform all other duties, tasks or projects as assigned.
   

Our employees are expected to embrace and uphold our firm values as a part of our DLA Piper culture. We are committed to excellence in how we represent our clients and develop our people.

Physical Demands

Sedentary work: Exerting up to 10 pounds of force occasionally and/or a negligible amount of force frequently or constantly to lift, carry, push, pull or otherwise move objects, including the human body. Sedentary work involves sitting most of the time. Jobs are sedentary if walking and standing are required only occasionally and all other sedentary criteria are met.    

Work Environment    

The individual selected for this position may have the opportunity for a hybrid work arrangement comprised of remote and in-office work, the requirement for which will be determined in coordination with the hiring manager or supervisor and may be modified in the firm’s discretion in the future. 

Disclaimer    

The purpose of this job description is to provide a concise statement of the work elements and to organize and present the information in a standardized way. It is not intended to describe all the elements of the work that may be performed by every individual in this classification, nor should it serve as the sole criteria for personnel decisions and actions. The job duties, requirements, and expectations for this position may be modified at the Firm’s discretion at any time. This job description does not change the at-will nature of employment. 
 

Application Process     

Applicants must apply directly online instead of sending application materials via email. 
 

Accommodation    

Reasonable accommodations may be made upon request to permit individuals with a disability to perform the essential functions and responsibilities of the position or to participate in the job selection process. If you have a request for an accommodation during the application process, please contact [email protected]. 
 

Agency applications will not be considered.     
 

No immigration sponsorship is available for this position.    

The firm’s expected hiring range for this position is $45.32 - $62.79 per hour depending on the candidate’s geographic market location. Non-exempt positions will be paid on an hourly basis and paid overtime in accordance with applicable laws
 

The compensation offered for employment will also be dependent on other factors including the candidate’s experience, skills, educational and professional background, and overall qualifications. We offer a comprehensive package of benefits including medical/dental/vision insurance, and 401(k).
 

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DLA Piper is an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or status as a protected veteran. Job applicant poster viewing center.