IP Specialist

PATENT PROSECUTION- Responsible for daily tracking and clearance of patent prosecution docket for both foreign and domestic matters, insuring all statutory and non-statutory deadlines are met without fail and provide timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.- Prepare documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design 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, maintain prior art reference spreadsheets and tracking documents.ADMINISTRATIVE- Act as an advocate for the IP team this position supports 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 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- 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 multi-task and deal well with changing assignments and priorities.

Created: 2025-11-01