Patent Prosecution Specialist – Assistant

Location: Downtown Houston, TX

Hours: 8:30-5:15, 8:45-5, or 9-5:45 = 38.5-hour work week

Up to $100,000 with paid overtime.  450 billable hours requirement per year

$5,000 a year tuition aid and 18 days PTO

The first 90 days will be 5 days a week in the office for training and then you will be on a hybrid work model of 3 days in office and 2 days working remotely

This premier national law firm with 21 offices nationwide seeks a Patent Prosecution Specialist to become part of an incredible devoted global team of patent specialists, paralegals, docketing specialists and attorneys.

You will utilize your solid knowledge of both domestic and foreign intellectual property processes and policies, specifically in utility patents, design patents, and trademarks areas and communicate with clients and foreign agents regularly.

You will be responsible for scheduling and coordinating attorney travel arrangements; overseeing invoice payments, expenses, and reimbursements using Chrome River; prepare engagement letters; coordinate tracking of CLE for attorneys; draft shell amendments for Attorney use to respond to domestic and foreign actions; track and manage IP dockets and deadlines via CPi and PATTSY; generate and manage client portfolios; distribute and track work that is assigned to paralegals and other associates; draft, type and edit correspondence and IP documents accurately and efficiently; open and maintain new patent matters to include complete prosecution history and the matters should include: applications as filed, responses to actions as filed, notices issued by the PTO, correspondence with client and/or foreign agents, etc.; generate and file Information Disclosure Statements (IDSs); research information in order to obtain necessary non-patent literature documents and foreign publications for submission with the IDSs; Review issued patents and registered trademarks for errors, determine expiration date of patents and trademarks, and prepare certificate of correction, if necessary; draft reporting letters for attorney review and circulating to clients after approval; communicate with assigned attorneys, set priorities, meet deadlines and manage multiple patent-related projects; handle calendaring, scheduling meetings, file openings, etc.

Required and Preferred Skills:

Knowledge in LegalKey, CompliGuard Flow, Carpe Diem, and other Document Management systems.

Knowledge of the different types of IP databases (ePCT, USPTO, Espacenet, WIPO, and others.

Knowledge of Microsoft Office programs (Word, Visio, Excel and Outlook)

40 wpm typing

Experience:

2-10 years of two years patent prosecution experience is required

 Education:

High school diploma is required, and any degree strongly preferred.

The firm offers exceptional benefits of health, dental, vision, STD, LTD, life insurance, 401k, profit sharing, tuition aid, 18 days PTO, 9 holidays 401k, and lots of growth