IP Specialist

Hogan Lovells • Boston, MA

84d • $90,000 - $126,000

About The Position

The IP Specialist is responsible for supporting functions of the Americas Intellectual Property team. This position is responsible for all aspects of patent prosecution, with particular emphasis on tracking and coordinating fulfillment of all deadlines (foreign and domestic) with a diverse team of IP Specialists in multiple jurisdictions. Preparation of formal documents and filing of U.S. and PCT applications, as well as coordination of prosecution activities with in-house attorneys and foreign associates are key responsibilities. This is a billable position requiring accurate and timely submission of matter attributable billable hours.

Requirements

• Demonstrated attention to detail.
• Strong communication (written and verbal), interpersonal, and organizational skills.
• Proactive, with the ability to follow through with the resolution of issues with minimal supervision.
• Ability to meet deadlines under tight time constraints and other demands.
• Flexible attitude, with the ability to multi-task and deal well with changing assignments and priorities.
• Five (5)+ years of patent prosecution support experience preferred.
• Experience with prosecution of technology, energy, biotechnology, and pharmaceutical sector portfolios preferred.
• Billing experience, including electronic billing, preferred.
• Bachelor's degree preferred.

Responsibilities

• Responsible for daily tracking and clearance of patent prosecution docket for both foreign and domestic matters, ensuring all statutory and non-statutory deadlines are met without fail and providing timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
• Prepare documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, information disclosure statements, declarations, statements of use and extensions in compliance with USPTO guidelines and reporting filings to clients.
• Prepare formal documents for review, including declarations, powers of attorney, and assignments, for execution by the applicant or inventor.
• Coordinate filing of sequence listings and formal drawings prepared by outside vendors.
• Confirm the status of patent and trademark cases with the U.S. Patent and Trademark Office.
• Review face and claims of Letters Patent for accuracy.
• Prepare responses to notices (missing parts, office actions, disclosure statements, etc.).
• Prepare Notice of Allowance checklists for attorney review.
• Prepare and file Information Disclosure Statements, maintain prior art reference spreadsheets and tracking documents.
• Act as an advocate for the IP team by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
• Review and submission of IP-related third-party invoices and USPTO deposit account fees.
• Maintain tracking documents for client portfolios to indicate priority and subject-matter related applications, including monitoring pending claims across global patent portfolios and coordinating cross-citing of prior art references.
• Assist with researching issues relating to monthly client billing, such as client inquiries, estimates, budget tracking, or invoice discrepancies.
• Work directly with billing department to apply fixed-fee patent prosecution schedules to monthly proformas.
• Participate in the Global Responsible Business program.
• Other duties and projects as assigned.

Benefits

• Equal Opportunity Employer
• Reasonable accommodations for applicants and candidates with disabilities

What This Job Offers

• Job Type: Full-time
• Industry: Professional, Scientific, and Technical Services
• Education Level: Bachelor's degree