The Patent Prosecution Specialist will be responsible for support activities related to patent prosecution, including the preparation and filing of documents with the United States Patent and Trademark Office, and various administrative duties relating to our patent practice and assigned attorney/attorneys.
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Responsibilities
Preparation of patent prosecution documents, including transcribing instructions (written and/or verbal), producing patent applications, correspondence, reports, memoranda, proofreading and redlining, photocopying, assembling and distributing
Review and process Filing Receipt, Notice of Recordation, Office Actions, Notices of Allowance, Recordation of Assignment, Letters Patent, and Notice of Publication in accordance with set guidelines and procedures
Prepare pre-issuance documents, which includes Issue Fee Payments, and Requests for Recomputations of Patent Term Adjustment
Prepare and file the documents with the USPTO, including Request for Filing Receipt, Request for Corrected Filing Receipt, Issue Fees, Formal Drawings and New Patent Applications
Review and process examination Actions issued by the U.S. Patent Office and conduct accuracy analysis
Preparation of the appropriate drafts in response to Actions in accordance with set guidelines and procedures.
Prepare Inventor Declaration, Assignment and Power of Attorney
Review patent files for processing and preparation
Prepare IDS from international and foreign search reports
Prepare client reporting letters and/or correspondence to the foreign associates regarding IDS, foreign disclosures, etc.
Analyze PTO-issued documents for accuracy (such as filing receipts, assignment documents, office actions, etc.)
Provide copies of documents filed to client
Monitor patent docket
Contact PTO with status questions
Contact patent examiner regarding missing information
Make arrangements with draftsman to correct drawings as necessary
Prepare and file international/foreign national documents, including PCT Requests and PCT Demands, Responses to PCT Application inquiries and invitations and National phase application order letters
Possess knowledge of and keep abreast of rules according to the 37 CFR and MPEP
Oversee opening of new patent prosecution matters
Essential Job Specifications/Qualifications To perform this job successfully, an individual must be able to perform each essential duty satisfactorily. The requirements listed below are representative of the knowledge, skill, and/or ability required.
Act as a point of contact of clients, ensuring accuracy and completeness of information
Ability to apply problem solving skills and the ability to work under minimal supervision
Ability to pay close attention to detail
Ability to deal professionally with all levels of clients, both internally and externally as well as international clients
Ability to maintain confidence and handle client confidential information
Ability to manage and take ownership of numerous tasks simultaneously
Strong organization skills with the ability to independently organize large amounts of information, for easy filing and retrieval
Excellent computer skills and use of docketing systems
Provide back-up support to team and project assistance as needed
Ability to work overtime when necessary
Requires the ability to regular report to work on the days and times scheduled
All qualified applicants will receive consideration for employment without regard to race, color, national origin, age, ancestry, religion, sex, sexual orientation, gender identity, gender expression, marital status, disability, medical condition, genetic information, pregnancy, or military or veteran status. We consider all qualified applicants, including those with criminal histories, in a manner consistent with state and local laws, including the City of Los Angeles' Fair Chance Initiative for Hiring Ordinance.