We are seeking a highly skilled Patent Specialist with expertise in Informational Disclosure Statements (IDS) to join our innovative intellectual property team. This role is integral to safeguarding our company's technological advancements by managing patent prosecution processes, ensuring rigorous quality standards, and facilitating effective communication with patent offices worldwide. The ideal candidate will demonstrate a meticulous approach to patent documentation, a strong understanding of IDS procedures, and a proactive attitude toward maintaining the integrity of our patent portfolio. This position offers an opportunity to contribute significantly to the protection of cutting-edge innovations within a dynamic, forward-thinking organization.
Responsibilities
The Patent Prosecution Specialist will provide specialized patent support (including client management support where applicable) to assigned clients in the patent prosecution and counseling practice group. Specific duties include, but are not limited to:
Oversee IDS management for assigned client patent portfolios, often with independent initiative; review daily and weekly custom PPS docket reports provided by the central Docketing Department; create and maintain complex client IDS matrices in Excel; collect references for citation and prepare IDS forms; review all incoming U.S. Patent and Trademark Office (USPTO) and non-U.S. patent correspondence in respective client portfolios to assess need for preparation of new IDS’s in related, co-pending U.S. applications pursuant to IDS matrices; prepare correspondence to foreign associates in jurisdictions with prior art disclosure requirements to ensure complete citation of relevant references based on U.S. IDS citations.
Assist with diligence projects and chain of title research/assignment issues; perform U.S. and foreign name change projects; prepare patent searches using various firm-subscribed databases and public data; maintain continuing patent searches and patent clearance studies; conduct worldwide patent searches, create and update patent family trees in Visio, and maintain patent portfolio status charts; conduct Patent Term Adjustment (PTA) reviews, prepare Letters of Candor and/or Requests for Reconsideration, as required; conduct audit response polls in connection with periodic requests from clients’ auditors; perform tasks in connection with patent opinions (e.g., conduct timekeeper opinion poll, prepare chain of title chart, patent schedule, Officer’s Certificate, and back-up checklist); provide assistance with re-exams to include organization and maintenance of eRooms, organize prior art for information disclosure statements.
The ideal candidate should have 3+ years prior experience managing a patent prosecution docket, including managing complex U.S. IDS practices and non-U.S. prior art disclosures; proficient knowledge of document management software and time entry program; flexibility to work overtime in an infrequent basis. Candidates should also have knowledge of the rules according to 37 C.F.R. and PCT rules and regulations.
- Pay is from 80,000-135,000K! This is a HYbrid OPP!! Please hurry as this will not last!
Pay: $80,000.00 - $135,000.00 per year
Benefits:
- 401(k)
- Dental insurance
- Employee assistance program
- Employee discount
- Flexible spending account
- Health insurance
- Health savings account
- Life insurance
- Paid time off
- Parental leave
- Professional development assistance
- Referral program
- Retirement plan
- Tuition reimbursement
- Vision insurance
Work Location: In person
