IP Patent Prosecution Specialist (Diligence)

Cooley LLP•San Diego, CA

2d•$44 - $63•Hybrid

About The Position

IP Patent Prosecution Specialist (Diligence) Cooley is seeking an IP Patent Prosecution Specialist (Diligence) to join the IP Services team. Hybrid Schedule Philosophy: As part of the Cooley culture, we recognize and appreciate the value of being together, in person, to build comradery with others in the office and to be a contributing member of the Cooley office. However, we also appreciate the benefits and flexibility that come from remote working. As such, the default assumption for employees and partners is a hybrid schedule: some in-office presence and some work from home days. Employees on a hybrid work schedule must work from their regular state of residence during hybrid remote days and are expected to be within a commutable distance of a Cooley office. (Department director or manager will provide direction on your schedule and any in-office expectations). Position summary: The IP Patent Prosecution Specialist (Diligence) is responsible for providing specialized patent portfolio analysis and diligence support to patent attorneys, agents and clients and carries out the full duties and responsibilities of an IP Patent Prosecution Specialist (PPS).

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