IP Specialist

Hogan Lovells•Boston, DC

23h•$90,000 - $125,000

About The Position

The IP Patent Specialist is responsible for supporting functions of the Boston and San Francisco IP teams and 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 US 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 matters attributable to billable hours. Other responsibilities include a variety of IP-related administrative tasks. Importantly, this position requires proactively completing tasks and following through with the speedy resolution of issues with minimal supervision, including the ability to meet deadlines under very tight time constraints and other demands.

Requirements

Five (5) or more years of patent prosecution support experience required.
Bachelor’s degree required or equivalent combination of education and work experience.
Proactively, with the ability to follow through with the resolution of issues with minimal supervision and meet deadlines under very tight time constraints and other demands.
Strong interpersonal skills and the ability to manage a small group of support staff.
Excellent grammar, spelling, punctuation, and written communication skills.
Candidate must have exceptional analytical and oral communication skills.
Flexible attitude and the ability to deal well with changing assignments and priorities.
Ability to multitask.

Nice To Haves

Billing experience, including electronic billing, preferred.
Experience with the prosecution of biotechnology and pharmaceutical sector portfolios preferred.

Responsibilities

PATENT PROSECUTION 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 and file documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, PCT 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 and maintain prior art reference spreadsheets and tracking documents.
ADMINISTRATIVE Act as an advocate for the IP team.
This position supports 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 the Billing Department to apply fixed-fee patent prosecution schedules to monthly proformas.
Demonstrate knowledge of the firm’s culture, practices, business, and structure.
Demonstrate knowledge and adherence to basic firm policies, procedures, and processes.
All members of the firm are encouraged to participate in our Responsible Business program.
Other duties and projects as assigned.