Patent Filing Specialist Jobs

Our client, a multinational law firm, is seeking a US Filing Specialist to join their San Diego Office!

Primary Responsibilities

1. Applying detailed knowledge of patent prosecution, manage all aspects of administrative patent prosecution support for U.S. patent matters of assigned clients.
2. Develop and maintain strong relationships with assigned clients to deliver responsive and appropriate client service. Anticipate future requests based on understanding of client business needs.
3. Maintain manual calendar (Redbook) and review electronic docket for assigned clients; proactively communicate with and remind practitioners of due dates; review daily dockets and attend to pertinent entries with docket department.
4. Utilizing expertise of the patent practice and adhering to USPTO procedures and firm policies and protocols, prepare aesthetic and accurate U.S. applications and file electronically through EFS-Web and Patent Center.
5. In support of managing client portfolios, process incoming correspondence related to U.S. patent prosecution and timely report USPTO correspondence to clients within firm reporting standards.
6. Utilize in-depth knowledge of U.S. patent rules and requirements to work with practitioners in responding to office actions and completing formalities while providing all materials and support as needed. Research and provide accurate responses with pertinent information by researching via appropriate resources, including but not limited to internal databases and records in conjunction with external specialized patent resources such as PAIR/Patent Center and WIPO.
7. Monitor and ensure all deadlines are met, following up internally and externally as necessary.
8. Apply specialized knowledge of client preferences to assemble, establish, maintain, and adhere to specific guidelines for assigned clients and documenting same.
9. Respond to client inquiries regarding routine patent portfolio matters and provide status reports to clients upon request.
10. Provide back-up support for colleagues to complete overflow work.
11. Proactively mentor and regularly assist with training junior staff in department.
12. File documents and emails relating to U.S. patent prosecution.
13. Open electronic files for new applications and submit data change requests accordingly.
14. Assist with initiating client file transfers and disengaging clients.
15. Review vendor invoices for assigned clients and process for payment by accounting.

Education and Experience

1. Bachelor’s degree, paralegal certification, or the equivalent in experience
2. A minimum of 2 years of progressive patent experience required.