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IP Patent Practice Specialist
Los Angeles, California · LegalJob Title – IP Patent Practice Specialist
Company Location – Menlo Park, CA
On-site, Full Time
Pay –$90k-110k, DOE
3-days a week, Hybrid
Job Summary of the IP Patent Practice Specialist position
Integr8staff seeks a proven Patent Prosecution Practice Specialist to support life sciences and healthcare IP attorneys, patent agents, and paralegals in all aspects of patent prosecution for a nationally-recognized, award-winning law firm.
Responsibilities of the IP Patent Practice Specialist position
Assist the team with daily workflow tasks and projects in a high volume, fast paced practice while timely identifying and prioritizing time sensitive matters.
Work closely with attorneys, patent agents, paralegals, and practice specialists to prepare and file official correspondence using the Firm’s standards and procedures.
Maintain client files, enter time, submit expense reports, process case-related invoices.
Proactively manage casework, assignments, ensuring all deadlines are met in a timely manner.
Communicate docket updates to Docketing.
Work diligently to meet the annual billable hours requirement.
Must be available and able to work during core business hours.
Attend and actively participate in all training programs suggested by the Director of IP Administration, the IP Manager, and Office Administrator.
Contribute to the overall success of the Firm by performing other administrative and support duties as assigned.
Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, and track one applications.
Review, process, and act upon, where applicable, all incoming USPTO communications.
Prepare and file documents with the USPTO, including responses to USPTO pre-examination formalities notices, corrective documents, responses to Office Actions, e-terminal disclaimers, AFCP 2.0 requests, requests for continued examination, and notices of appeal, amendments after allowance, issue fee transmittals, etc.
Prepare amendment shells.
Track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms.
Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO.
Prepare and file documents related to sequence listings.
Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and file certificates of correction, review and proof certificates of correction.
Prepare client patent portfolio summary reports
Contact the USPTO regarding the status of applications.
Review and proof, when applicable, patent certificates and forward to clients.
Submit conflict checks and open new matters, including preparation of engagement letters and management of client and case documents.
Ensure that client matter numbers are opened according to the Firm’s guidelines.
Maintain working knowledge of client guidelines, procedures, and preferences. Prepare filing documents and client correspondence in alignment with these procedures.
Review actions entered by the Docketing team for accuracy and inform Docketing of any discrepancies.
Review and manage assigned dockets.
Monitor deadlines, and follow-up with attorneys, agents, and paralegals in a timely manner.
Prepare and distribute docket or status reports as directed.
Requirements of the IP Patent Practice Specialist position
A minimum of 3-5 years of patent prosecution experience in a law firm.
Strong knowledge of U.S. patent rules and procedures.
Strong working knowledge of filing in USPTO Patent Center.
Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
Ability to work independently and within a team environment.
Strong attention to detail, prioritization tasks, and excellent time management skills to meet deadlines.
Clear and concise communication skills
Ability to work overtime, evenings, and weekends, as needed.
Experience working with life science clients and US requirements for sequence listing submissions is preferred, but not required.
Proficiency in Windows 10, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom
A bachelor's degree or some college is preferred
Updated resume is required for consideration. Only Local candidates will be considered - Position does not offer relocation or visa sponsorship.
Company Location – Menlo Park, CA
On-site, Full Time
Pay –$90k-110k, DOE
3-days a week, Hybrid
Job Summary of the IP Patent Practice Specialist position
Integr8staff seeks a proven Patent Prosecution Practice Specialist to support life sciences and healthcare IP attorneys, patent agents, and paralegals in all aspects of patent prosecution for a nationally-recognized, award-winning law firm.
Responsibilities of the IP Patent Practice Specialist position
Assist the team with daily workflow tasks and projects in a high volume, fast paced practice while timely identifying and prioritizing time sensitive matters.
Work closely with attorneys, patent agents, paralegals, and practice specialists to prepare and file official correspondence using the Firm’s standards and procedures.
Maintain client files, enter time, submit expense reports, process case-related invoices.
Proactively manage casework, assignments, ensuring all deadlines are met in a timely manner.
Communicate docket updates to Docketing.
Work diligently to meet the annual billable hours requirement.
Must be available and able to work during core business hours.
Attend and actively participate in all training programs suggested by the Director of IP Administration, the IP Manager, and Office Administrator.
Contribute to the overall success of the Firm by performing other administrative and support duties as assigned.
Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, and track one applications.
Review, process, and act upon, where applicable, all incoming USPTO communications.
Prepare and file documents with the USPTO, including responses to USPTO pre-examination formalities notices, corrective documents, responses to Office Actions, e-terminal disclaimers, AFCP 2.0 requests, requests for continued examination, and notices of appeal, amendments after allowance, issue fee transmittals, etc.
Prepare amendment shells.
Track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms.
Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO.
Prepare and file documents related to sequence listings.
Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and file certificates of correction, review and proof certificates of correction.
Prepare client patent portfolio summary reports
Contact the USPTO regarding the status of applications.
Review and proof, when applicable, patent certificates and forward to clients.
Submit conflict checks and open new matters, including preparation of engagement letters and management of client and case documents.
Ensure that client matter numbers are opened according to the Firm’s guidelines.
Maintain working knowledge of client guidelines, procedures, and preferences. Prepare filing documents and client correspondence in alignment with these procedures.
Review actions entered by the Docketing team for accuracy and inform Docketing of any discrepancies.
Review and manage assigned dockets.
Monitor deadlines, and follow-up with attorneys, agents, and paralegals in a timely manner.
Prepare and distribute docket or status reports as directed.
Requirements of the IP Patent Practice Specialist position
A minimum of 3-5 years of patent prosecution experience in a law firm.
Strong knowledge of U.S. patent rules and procedures.
Strong working knowledge of filing in USPTO Patent Center.
Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
Ability to work independently and within a team environment.
Strong attention to detail, prioritization tasks, and excellent time management skills to meet deadlines.
Clear and concise communication skills
Ability to work overtime, evenings, and weekends, as needed.
Experience working with life science clients and US requirements for sequence listing submissions is preferred, but not required.
Proficiency in Windows 10, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom
A bachelor's degree or some college is preferred
Updated resume is required for consideration. Only Local candidates will be considered - Position does not offer relocation or visa sponsorship.