Talent.com
IP US Filing Specialist
IP US Filing SpecialistCooley LLP • San Diego, CA, United States
IP US Filing Specialist

IP US Filing Specialist

Cooley LLP • San Diego, CA, United States
[job_card.30_days_ago]
[job_preview.job_type]
  • [job_card.full_time]
[job_card.job_description]

IP US Filing Specialist

Cooley is seeking an IP US Filing Specialist to join the IP Services team.

Position Summary : The IP US Filing Specialist (USFS) provides full support to patent attorneys, agents, and clients in filing and maintaining US applications and patents. Specific duties include, but are not limited to, the following

Position Responsibilities :

  • Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters
  • Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; forward all USPTO mail to Client Team and provide timely reminders of upcoming dates
  • Prepare and review required documents for filing; upload of same with the USPTO all US patent prosecution filings, including applications, (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, issue fee payments, etc
  • Prepare, file and report of US formalities (e.g., POAs, assignments, declarations, drawings),

and non-substantive USPTO documents, such as filing receipts, publications, along with preparation of reminder letters to clients of upcoming deadlines

  • Handle and report all substantive USPTO actions with input from Responsible Attorney, including preparing draft amendments / responses to official actions and notices to file missing parts, obtaining identified references, processing notices of allowance including attending to the Notice of Allowance Review Form in coordination with the Patent Prosecution Specialist and Patent Practitioner, addressing any inventorship / assignment issues, and preparing related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)
  • Proof and forward Letters Patent to the client
  • Provide client support for portfolio management, including accommodating client-specific reporting guidelines, and responding to client phone calls and / or emails relating to specific requests or reports
  • Sustain working knowledge of US patent prosecution rules and recommend procedural modifications to accommodate changes as needed
  • Maintain a secondary docket of due dates for each assigned client as outlined in the Patent Prosecution Policies and Procedures Manual
  • Review docket reports and provide detailed annotations related to upcoming dates daily
  • Complete administrative tasks including maintenance of client data rooms, responding to deadlines and changes to dockets, along with other communication with the central Docketing Department, run patent reports, transfer in / out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Communicate regularly with the assigned Patent Prosecution Specialist (PPS) regarding the timing of filing IDSs, as well as reporting any IDS filed to the client
  • Skills & Experience :

    Required :

  • After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
  • Available to work overtime, as required
  • 3+ years relevant IP experience
  • Preferred :

  • Bachelor's Degree
  • Previous law firm experience
  • Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
  • Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)
  • Competencies :

  • Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs
  • Ability to work independently and under pressure / tight time constraints
  • Creative and entrepreneurial approach to problem-solving and process improvement
  • Flexible and agile, ability to reprioritize with changes in the business
  • Strong initiative and a get-it-done attitude
  • Excellent communication and interpersonal skills
  • Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.

    EOE.

    The expected hourly pay range for this position with a work schedule of 40 hours per week is $42.00 - $61.00 ($87,360.00 - $126,880.00 annually). Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate.

    We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and / or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and / or adults and other parental support benefits. In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off ("PTO") and 10 paid holidays each year. We provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.

    [job_alerts.create_a_job]

    Ip Specialist • San Diego, CA, United States

    [internal_linking.related_jobs]
    IP Conflicts Analyst

    IP Conflicts Analyst

    Cooley LLP • San Diego, CA, United States
    [job_card.full_time]
    Cooley is seeking an IP Conflicts Analyst to join the Business Intake and Conflicts team.The IP Conflicts Analyst is responsible for the identification, analysis, and resolution of all IP conflicts...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Clinical RN II-IMC - Medical Step-Down $30K Hiring Incentive

    Clinical RN II-IMC - Medical Step-Down $30K Hiring Incentive

    Palomar Health • Escondido, CA, United States
    [job_card.full_time]
    Internal Closing Date : 10 / 20 / 2025.Internal candidates must apply by midnight on the Closing Date in order to have bidding rights. Primarily responsible for the delivery of coordinated nursing care f...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Clinical RN II Labor / Delivery $45K Hiring Incentive

    Clinical RN II Labor / Delivery $45K Hiring Incentive

    Palomar Health • Escondido, CA, United States
    [job_card.full_time]
    Internal Closing Date : 10 / 20 / 2025.Internal candidates must apply by midnight on the Closing Date in order to have bidding rights. Primarily responsible for the delivery of coordinated nursing care f...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Network Specialist

    Network Specialist

    Grossmont Union High School District • El Cajon, CA, US
    [job_card.full_time]
    Purpose Statement : The job of Network Specialist II is done for the purpose / s of designing, installing, upgrading, and maintaining LAN and WAN networks, Internet access, Voice over IP Phones and le...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Per Diem Advanced Practice Provider (APP)

    Per Diem Advanced Practice Provider (APP)

    DAP Health • Escondido, CA, United States
    [job_card.full_time]
    At DAP Health, we are committed to transforming lives and advancing health equity for all.As a leading nonprofit health care provider, we deliver compassionate, high-quality care to the diverse com...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    D365 ERP Integration Specialist

    D365 ERP Integration Specialist

    WD-40 Company • San Diego, CA, United States
    [job_card.full_time]
    D365 ERP Integration Specialist.Are you passionate about connecting systems, streamlining operations, and driving smarter decision-making across an organization? In this pivotal role, you will ensu...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Billing and Reimbursement Analyst - Hybrid - 137554

    Billing and Reimbursement Analyst - Hybrid - 137554

    UC San Diego • San Diego, CA, United States
    [job_card.full_time]
    Greenwich Drive, San Diego, CA 92122, United States .Billing and Reimbursement Analyst - Hybrid.Filing Deadline : Tue 12 / 16 / 2025. UC San Diego values and welcomes people from all backgr...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    HSPD-12 : Government Badging & Credentialing Specialist (San Diego, CA - REF1822D) • •

    HSPD-12 : Government Badging & Credentialing Specialist (San Diego, CA - REF1822D) • •

    Citizant • San Diego, CA, United States
    [job_card.full_time]
    Citizant is a leading provider of professional IT services to the U.We seek to address some of our country's most pressing challenges in the areas of Agile application development, Enterprise Data ...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Complaint Management Specialist (Onsite)

    Complaint Management Specialist (Onsite)

    A-Line Staffing Solutions LLC • San Diego, CA, US
    [job_card.full_time]
    Title : Complaint Management Specialist III.Note : This is a W2 contract role – 1099, C2C, and 3 rd party candidates will NOT be considered. Complaint Specialist Customer Advocacy role is responsible ...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Health Services Director LVN - Sign-on bonus offered!

    Health Services Director LVN - Sign-on bonus offered!

    Oakmont Senior Living • Escondido, CA, United States
    [job_card.full_time]
    Managed by Oakmont Management Group,we provide exceptional quality, comfort, and care with five-star services and amenities. Residents enjoy a rewarding lifestyle with individualized comprehensive s...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    $150k Clinical Applications Specialist (Ultrasound)

    $150k Clinical Applications Specialist (Ultrasound)

    Fallstaff Search • San Diego, CA, US
    [job_card.full_time]
    K+ Clinical Applications Specialist (Ultrasound) to support a fast-growing Medical Device Company.We have 2 openings, one in Southern CA and another one in NY. Excellent leadership and team dynamics...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Federal Aviation Enforcement Pilot (Hiring Immediately)

    Federal Aviation Enforcement Pilot (Hiring Immediately)

    U.S. Customs and Border Protection • Poway, CA, US
    [job_card.full_time]
    Pilot CBP Air Interdiction Agent.Air and Marine Operations (AMO), a component of U.Customs and Border Protection (CBP), offers skilled Pilots interested in law enforcement an opportunity to work wi...[show_more]
    [last_updated.last_updated_30] • [promoted]
    IP - LVN - S

    IP - LVN - S

    PACS Inc • El Cajon, CA, United States
    [job_card.full_time]
    Every effort has been made to identify the essential functions of this position.However, it in no way states or implies that these are the only duties you will be required to perform.The omission o...[show_more]
    [last_updated.last_updated_30] • [promoted]
    PM&R | Private Practice Opportunity | 500K Base Salary with Bonuses

    PM&R | Private Practice Opportunity | 500K Base Salary with Bonuses

    Jackson Physician Search • Ramona, CA, United States
    [job_card.full_time]
    Join an interdisciplinary team of spine surgeons, pain management specialists, neurologists, and physical therapists in a collaborative environment to focus on chronic pain and help patients with i...[show_more]
    [last_updated.last_updated_1_day] • [promoted]
    IP Attorney

    IP Attorney

    Jobot • San Diego, CA, US
    [job_card.full_time]
    Top-Tier Am Law Firm is looking for an IP Attorney to join their growing team!.This Jobot Job is hosted by : Scott Rundlett. Are you a fit? Easy Apply now by clicking the "Apply Now" button and sendi...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Fiber Optic Specialty Engineer

    Fiber Optic Specialty Engineer

    Leidos Inc • San Diego, CA, United States
    [job_card.full_time]
    Leidos, is the largest independent naval architecture and marine engineering firm in the United States.Since our founding in 1929, 24 classes of combatants and nearly 7,000 vessels have been built ...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Billing and Reimbursement Analyst - Hybrid - 137554

    Billing and Reimbursement Analyst - Hybrid - 137554

    UC San Diego Health • San Diego, CA, United States
    [job_card.full_time]
    UCSD Layoff from Career Appointment.Apply by 11 / 25 / 25 for consideration with preference for rehire.All layoff applicants should contact their Employment Advisor. Eligible Reassignment clients should...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Managing Partner, IT Strategy Consulting, HTTP (High-Tech Providers)

    Managing Partner, IT Strategy Consulting, HTTP (High-Tech Providers)

    Gartner • San Diego, CA, United States
    [job_card.full_time]
    Gartner's Consulting business is an.Gartner's industry-leading IT Research.From CIOs, to leaders in business and government, we help Gartner clients across enterprises translate insights into trans...[show_more]
    [last_updated.last_updated_30] • [promoted]