IP Patent Prosecution Specialist (Diligence)

Cooley•Palo Alto, CA

1d•Hybrid

About The Position

Cooley is seeking an IP Patent Prosecution Specialist (Diligence) to join the IP Services team. This role is responsible for providing specialized patent portfolio analysis and diligence support to patent attorneys, agents, and clients, carrying out the full duties and responsibilities of an IP Patent Prosecution Specialist (PPS). The position involves a hybrid schedule, balancing in-office collaboration with the flexibility of remote work, with employees expected to work from their state of residence on remote days and be within a commutable distance of a Cooley office.

Requirements

Available to work overtime, as required
After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
3+ years experience in an IP-related role

Nice To Haves

Bachelor’s degree
Previous law firm experience
Experience researching IP status and history in PTO databases, including USPTO systems (PatentCenter), WIPO Patentscope, 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

Responsibilities

Provide support for all patent diligence projects firm-wide
Conduct client and competitor patent searches using various firm-subscribed databases and public data
Review patent ownership and prepare chain-of-title review
Research patent families and prepare patent family trees in Visio
Prepare and maintain patent portfolio analysis reports
Perform tasks in connection with Patent Opinions (e.g., conduct timekeeper opinion poll, prepare Officer’s Certificate and back-up checklist, and work with practitioner to confirm chain-of-title and patent schedules)
Assemble patent claims charts
Prepare Client Status reports
Oversee IDS management for assigned client patent portfolios
Review daily and weekly custom PPS docket reports and update notes in Inprotech events
Create and maintain complex client IDS spreadsheets in Excel and corresponding records in IDS support software (MaxIDS)
Prepare IDS forms and collect and clean electronic copies of prior art references
Monitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art references
Perform pre-examination, examination, and post-allowance IDS reviews
Assist with re-examination petitions to include organization of prior art for IDS’s
Provide foreign associates with prior art lists to fulfill information requirements for jurisdictions such as Israel, in order to ensure complete disclosure of relevant references
Regularly monitor USPTO Patent Application Information Retrieval (PAIR) and other databases to verify status of client patent assets and, upon request, competitor patent assets
Independent docket review, and IDS workflow coordination with the client service team with respect to meeting upcoming deadlines