Large, international law firm is seeking a patent prosecution secretary with a college degree and years of patent experience.

The position begins as a remote position but will change in the future.

JOB SUMMARY
You will perform complex and specialized work by providing patent prosecution administrative support to assigned clients. A key component of the position is to provide support for portfolio management, submit papers to the U.S. Patent and Trademark Office (USPTO), engage client with status updates, manage departmental deadlines and personal docket, and monitor workflow for assigned clients. In addition, the U.S. Patent Prosecution Specialist will ensure compliance with policies and procedures implemented by the client and Firm and support the IP Department to ensure client service and satisfaction is achieved throughout all assigned responsibilities.

PRINCIPAL DUTIES AND RESPONSIBILITIES*

• Prepare and electronically file (EFS) documents at the U.S. Patent and Trademark Office (hereinafter “USPTO”), including applications, amendments, responses, petitions, information disclosure statements, issue fees, etc.
• Prepare basic patent documents for client execution and file same at the USPTO, including declarations, assignments, powers of attorney, etc.
• Review Official Filing Receipts, Notices of Recordation of Assignment, Notices of Allowance, Issue Notifications, etc. for accuracy. Prepare reporting letters to clients. If required, prepares a request for correction, when applicable.
• Prepare and forward reporting letters to clients regarding Office Actions and other USPTO communications, such as Notices to File Missing Parts and related Notices. Also, prepare and forward reporting letters to clients regarding USPTO filings, communications to and from foreign patent associates for U.S. National Phase applications, etc.
• Prepare and forward reminders to clients regarding due dates and instructions.
• Review application papers being filed in the USPTO for accuracy and completeness regarding inventors, assignees, priority data, etc.
• Order and review drawings for accuracy and completeness prior to submission to the USPTO.
• Forward Letters Patent to the client and file Fee Address Indication forms for the annuity service provider selected by the client.
• If applicable, enter time and the billing description in Web View for projects completed. Notify the Accounting Department when a project is completed and ready for billing.

MINIMUM QUALIFICATIONS

Knowledge/Skills/Abilities:

• Knowledgeable of current U.S. prosecution and worldwide patent laws and rules preferred.
• Knowledgeable of USPTO online sites and related websites, including PAIR, EFS and EPAS and related websites.
• Ability to meet or exceed departmental quality and quantity standards per the Patent Prosecution Department Operational Guidelines.
• Strong sense of accountability, taking ownership over projects and responsibilities and resolving issues proactively.
• Ability to work independently and meet deadlines, including demonstrated ability to work on multiple projects with often competing deadlines.
• Proven problem-solving skills and good judgment under pressure.
• Ability to resolve issues and concerns proactively, constructively, directly and respectfully.
• Ability to assess risk management issues and understanding when to seek appropriate assistance.
• Demonstrate a positive, service-oriented attitude and a commitment to teamwork.
• Ability to accurately interpret a variety of instructions furnished in written or oral form to synthesize complex and diverse information.
• Meticulous attention to detail, accuracy and thoroughness.
• Ability to communicate effectively with all levels of management, staff and timekeepers.
• Strong technical aptitude and understanding, including ability to quickly learn new software applications.
• Proficient in software applications related to functions of position, including Word and Outlook; basic knowledge of Excel and PowerPoint preferred; some knowledge of docketing database preferred.
• Reliability, flexibility and dependability are essential.

Education:

• Minimum four-year college degree. Related work experience may be used in lieu of formal education.

Experience:

• Minimum of two (2) years of experience in patent prosecution.