The IP Specialist is responsible for supporting the functions of the Americas Intellectual Property team. This position is responsible for all aspects of patent prosecution, with particular emphasis on tracking and coordinating fulfillment of all deadlines (foreign and domestic) with a diverse team of IP Specialists in multiple jurisdictions.
Preparation of formal documents and filing of US and PCT applications, as well as coordination of prosecution activities with in-house attorneys and foreign associates are key responsibilities.
This is a billable position requiring accurate and timely submission of matters attributable to billable hours. Other responsibilities include a variety of IP-related administrative tasks. Importantly, this position requires proactively completing tasks and following through with the speedy resolution of issues with minimal supervision, including the ability to meet deadlines under very tight time constraints and other demands.
PRIMARY RESPONSBILITIES- Daily tracking and clearance of patent prosecution docket for both foreign and domestic matters, ensuring all statutory and non-statutory deadlines are met without fail and providing timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
- Prepare and file documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, PCT applications, information disclosure statements, declarations, statements of use, and extensions in compliance with USPTO guidelines and reporting filings to clients.
- Prepare formal documents for review, including declarations, powers of attorney, and assignments, for execution by the applicant or inventor.
- Coordinate filing of sequence listings and formal drawings prepared by outside vendors.
- Confirm the status of patent and trademark cases with the U.S. Patent and Trademark Office.
- Review face and claims of Letters Patent for accuracy.
- Prepare responses to notices (missing parts, office actions, disclosure statements, etc.).
- Prepare Notice of Allowance checklists for attorney review.
- Prepare and file Information Disclosure Statements, and maintain prior art reference spreadsheets and tracking documents.
- Act as an advocate for the IP team. This position supports the IP team by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
- Review and submission of IP-related third-party invoices and USPTO deposit account fees.
- Maintain tracking documents for client portfolios to indicate priority and subject-matter-related applications, including monitoring pending claims across global patent portfolios and coordinating cross-citing of prior art references.
- Assist with researching issues relating to monthly client billing, such as client inquiries, estimates, budget tracking, or invoice discrepancies.
- Work directly with the Billing Department to apply fixed-fee patent prosecution schedules to monthly proformas.
- All members of the firm are encouraged to participate in our Global Responsible Business program.
- Other duties and projects as assigned.
QUALIFICATIONSREQUIRED SKILLS
- Excellent demonstrated attention to detail
- Strong communication (written and verbal), interpersonal, and organizational skills.
- Proactive, with the ability to follow through with the resolution of issues with minimal supervision.
- Ability to meet deadlines under tight time constraints and other demands.
- Flexible attitude, with the ability to multitask and deal well with changing assignments and priorities.
EDUCATION, CERTIFICATIONS, AND/OR EXPERIENCE
- Five (5)+ years of patent prosecution support experience required.
- Experience with the prosecution of technology and energy portfolios preferred.
- Billing experience, including electronic billing, preferred.
- Bachelor's degree required or equivalent combination of education and work experience.
HOURSCore hours are Monday through Friday, 9:00 a.m. - 5:30 p.m., including one hour for lunch. Willingness and ability to work overtime as needed.
In Los Angeles, the expected base salary range for this role is $95,050 - $133,490 per year.
In San Francisco, the expected base salary range for this role is $106,930 - $150,180 per year.
In Silicon Valley, the expected base salary range for this role is $107,890 - $151,510 per year.
This range reflects a good-faith estimate of pay at the time of posting; the actual compensation offered may vary depending on factors such as the candidate's qualifications. This position is eligible for additional forms of compensation, which may include annual discretionary bonuses. Employees in this role are also eligible for benefits offered by the firm, subject to applicable plan terms and conditions, which currently include medical, dental, and vision insurance; a 401(k) retirement plan; and paid time off. Please review this link for more information regarding employee benefits in the United States.
We will consider for employment qualified applicants with arrest and conviction records in a manner consistent with the requirements of applicable law, including the San Francisco Fair Chance Ordinance and City of Los Angeles Fair Chance Initiative for Hiring Ordinance.
This job description sets forth the responsibilities of this position and may be changed from time to time as shall be determined.
