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Patent Prosecution Specialist
Patent Prosecution SpecialistMorgan Lewis • Silicon Valley, California
Patent Prosecution Specialist

Patent Prosecution Specialist

Morgan Lewis • Silicon Valley, California
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  • [job_card.full_time]
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Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is seeking to hire a Patent Prosecution Specialist for our Intellectual Property Patent Support Unit. Reporting to the Senior Manager of Patent Support Services, the Patent Prosecution Specialist will be responsible for supporting activities related to patent prosecution and the preparation and filing of documents related to international and foreign national patent applications.

Morgan Lewis recognizes the benefits of supporting flexible working arrangements. This position will reside in our Silicon Valley (Palo Alto) office with a hybrid in-office / remote working schedule. Flexibility with overtime is required.

Key responsibilities include :

Prepares and files documents with the U.S. Patent and Trademark Office such as, New Patent Applications, IDS, Preliminary Amendments, and formalities and prepares client reporting letters and correspondence regarding formalities, Official Actions, Notices of Allowance, and Letters Patent.

Prepares and files documents related to international and foreign national patent applications and files documents with the World Intellectual Property Office International Bureau and foreign national patent offices in accordance with set guidelines and procedures.

Analyzes PTO-issued documents for accuracy (such as filing receipts, assignment documents, certificates of correction, etc.).

Prepares patent prosecution documents, including transcribing instructions (written and / or verbal), producing patent applications, correspondence, reports, memoranda, proofreading and redlining, photocopying, assembling and distributing.

Maintains accurate information on patent file jackets and creates and updates client status charts and reports.

Experience and qualifications :

Bachelor's degree and 3 - 5 years of current patent prosecution experience.

Strong organizational skills to prioritize work and balance multiple projects and assignments.

Ability to work well under pressure and the ability to participate in a team environment.

Excellent written and oral communication skills and exceptional attention to detail.

Proficiency in and knowledge of the following software : CPI Patent, CPI Trademark, MS-Office (MS Word, PowerPoint, Excel), WorkSite, Adobe Acrobat, Legal MacPac, Outlook, Office Communicator, iManage.

Benefits / Why Join Us

Morgan Lewis offers attractive benefits and competitive salaries. Our compensation structure rewards exceptional performance and recognizes the talent and experience that our people gain with each year of service. We are committed to offering the best and most comprehensive benefits including :

  • Medical coverage, with a variety of plans
  • Health care and dependent care reimbursement accounts
  • Domestic partner coverage
  • Parental leave
  • Vacation and holiday leave
  • Life and accident insurance
  • Income protection, including sick leave, salary continuation, and long-term disability

#LI-Hybrid

For positions in Silicon Valley, CA, the salary range for this job posting is :

$71,815.00 - $114,904.00.

The base salary or hourly wage range for this position will be determined during the interview process and will vary based on multiple factors, including but not limited to prior experience, relevant expertise, current business needs, and market factors. The final salary or hourly wages offered may be outside of this range based on other reasons and individual circumstances. Additionally, salary or hourly wages may be only part of the total compensation package. The total compensation package for this position may also include a full range of medical, financial, and / or other benefits (including 401(k) eligibility and various paid time off benefits, such as vacation, sick time, and parental leave), dependent on the position offered. Details of participation in these benefit plans will be provided if an employee receives an offer of employment. If hired, the employee will be in an "at-will position" and the firm reserves the right to modify base salary (as well as any other discretionary payment or compensation or benefit program) at any time, including for reasons related to individual performance, firm or individual department / team performance, and market factors.

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Patent Specialist • Silicon Valley, California

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