IP Services Assistant (Patent Prosecution)

Troutman Pepper•San Diego, CA

1d•$60,000 - $85,000•Hybrid

About The Position

The Intellectual Property Services Assistant (IPSA) is a member of the Health Care Life Sciences (HCLS) Practice Group and is assigned to specific matters, clients, projects and paralegal teams. The IPSA assists the practice group to function in a consistent productive manner; is responsive and ensures all day-to-day responsibilities are met under established policies and procedures while exercising discretion and confidentiality in maintaining contact with clients, attorneys, and staff. There is an annual billing component to this role of 1,000 hours.

Requirements

Working knowledge of USPTO procedures, Patent Center, and best practices for domestic and international patent filings, including PCT matters.
Familiarity with U.S. and international patent law; display a strong commitment to broadening patent prosecution knowledge.
Ability to work independently with minimal supervision on routine and moderately complex matters; escalates only novel or high-risk issues.
Ability to provide guidance or informal mentorship to newer team members as needed.
Strong organizational and administrative skills; able to manage a high volume of work accurately and meet competing priorities.
Ability to review and prioritize high volume of e-mails.
Able to work independently and collaboratively in hybrid and in-office settings, under supervision or self-directed as needed.
Ability to work within strictly defined client guidelines and follow detailed protocol.
Ability to proofread work generated by self and others.
Flexible and adaptable to changing assignments and priorities.
Ability to work within defined firm guidelines and policies.
Effective written and verbal communication skills; able to compose, proofread, and edit correspondence for accuracy.
Provides high-quality, professional service to internal and external clients with courtesy and tact.
Strong interpersonal skills; communicates effectively with diverse groups including clients, attorneys, and staff at all levels.
Able to identify straightforward issues ask clarifying questions and assist with implementing solutions.
Ability to research websites and online resources to support client communications and maintain accurate data in IP-related software.
Proficient in Microsoft Office Suite (Word, Excel, Outlook, PowerPoint, OneNote, Teams).
Bachelor's degree and/or any combination of experience, education or training that demonstrates the ability to perform the duties of the position.
Four (4) or more years of experience working in a patent prosecution support role in a legal or professional services environment.

Responsibilities

Prepare and file patent application documents, transmittal cover sheets, assignments, declarations, Powers of Attorney, and other documents with the USPTO.
Handle varying formalities and procedures of domestic and foreign patent offices with minimal supervision.
Assemble and submit Information Disclosure Statements (IDS); meticulously and efficiently manage IDS reference lists across multiple patent families and jurisdictions.
Draft prosecution documents (preliminary amendments, amendment shells, petitions, certificates of correction, request for corrected filing receipt, etc.) for paralegal and/or attorney review prior to submission.
Complete internal and/or client checklists as required.
If requested, independently manage day-to-day upkeep of an assigned client portfolio, proactively identifying and resolving discrepancies with minimal paralegal oversight.
Assist paralegal with monitoring and managing U.S. and foreign docket deadlines.
Assist paralegal in collaborating with the IP docket department to clear daily reports per firm guidelines.
Prioritize daily tasks and communicate promptly if deadlines cannot be met.
Serve as primary point of contact for routine correspondence with clients and foreign associates on U.S., PCT, and foreign application matters.
Communicate directly with clients/foreign associates without requiring attorney or paralegal review/sign-off.
Review client information to ensure compliance with special instructions and procedures.
Timely save all documents and correspondence in iManage.
Maintain and update spreadsheets and worksheets for portfolio and client management.
Research materials relevant to patent prosecution and review correspondence from U.S. and foreign patent offices.
Stay current on rules, regulations, and procedures for domestic and international filings.
Utilize USPTO and other government agency electronic resources effectively.
Track and record billable and non-billable time per firm policy.
Provide backup support to team members and collaborate across paralegal, attorney, and practice groups.