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Patent Prosecution Specialist

  • Location: New York
  • Type: Direct Hire
  • Job #269

Patent Prosecution Specialist – LA | BOS | NYC | DC – Late shift available for NY 

BENEFITS: Salary to 85,000K, plus paid overtime, Paid Time Off, Bonus, 401K, Medical Dental & Vision Coverage, Life and AD&D Insurance, Retirement Plans, Profit Sharing match, Flexible Spending Accounts, Transit Program and more!

LOCATION: New York City | Los Angeles | Boston | Washington D.C.

THE ORGANIZATION: An International Law Firm 

KEY RESPONSIBILITIES:

  • Analyze, prepare and file incoming communication and documents related to USPTO, declarations, assignments, powers of attorney, and more; process and enter required information into firm database
  • Prepare patent prosecution documents, transcribe instructions, produce patent applications, correspondence, reports, memoranda, proofreading and distributing
  • Reconcile as-filed documents, acknowledgment receipts, docket sheets, attorney comments, inbound and outbound communication against due dates in order to clear dockets
  • Prepare client reporting letters and correspondence
  • Manage department email for incoming communication and prepare email reminders regarding deadlines and instructions for clients
  • Draft system reports and customize queries regularly and upon request
  • Audit application papers and PTO-issued documents for inconsistencies and inaccuracies
  • Research, resolve and answer questions related to the docket
  • Confirm and update case data using official online databases for US and foreign patent matters
  • Audit drawings for competition and accuracy before submitting to the USPTO
  • Assist with new client intake and portfolio transfers

REQUIREMENTS:

  • 2+ years of patent IP, prosecution, or docketing experience
  • Bachelor’s degree required
  • Knowledge of current US and worldwide prosecution and patent laws 
  • Familiarity using a docketing system, CPI and Patricia
  • USPTO and foreign patent docketing experience
  • Knowledge of USPTO practices and procedures
  • Excellent organizational, problem-solving, analytical and decision-making skills a
  • Excellent verbal and written communication skills
  • Strong proofreading and reading comprehension skills
  • Microsoft Word, Excel and Outlook