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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
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  • [job_card.full_time]
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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.

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