IP Specialist

DLA Piper•Palo Alto, CA

10d•$40 - $64•Hybrid

About The Position

The IP Specialist, working in collaboration with and in support of the firm’s strategic initiatives, will be responsible for providing administrative and patent prosecution support to our prosecution practice group. This position can sit in our Palo Alto, Los Angeles, Phoenix, San Diego, San Francisco, or Seattle office and offers a hybrid work schedule.

Requirements

Must have experience filing with the USPTO as well as knowledge of USPTO rules and practices, including docketing, public/private PAIR, US prosecution and formality requirements.
Must be a self-starter and have excellent communication, writing and organizational skills including keeping the attorneys and patent agents on track through overseeing the docket and taking a proactive approach.
Individuals should have proven administrative abilities, excellent judgment, and the ability to handle multiple time-sensitive tasks in a fast-paced environment.
Punctuality is a must.
Candidates must be able to work independently, as well as be a team player.
Strong computer skills are required, including Microsoft Word, Excel, and Outlook.
High School or GED.
3 years’ office/administrative experience in a professional services and/or legal industry.

Nice To Haves

Knowledge of law firm billing programs (Webview) and patent docketing software (OP Solutions Pattsy) helpful.
Patent prosecution experience highly preferred.

Responsibilities

Prepares and finalizes all documents needed to complete the filing of provisional, non-provisional and PCT applications.
Prepares formal documents (assignment, declaration, power of attorney), obtains appropriate signatures, and follows-up as needed.
Records assignments with US Patent Office.
Files declaration and power of attorney documents.
Assists in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates.
Prepares and files responses to corrected applications papers, request for corrected filing receipts, updates to applicants and inventors (application data sheet).
Prepares and files response to restriction requirements along with preliminary amendments.
Prepares office action response shells and letters to clients reporting office actions along with pending claim set.
Prepares and files response to office actions along with extensions of time, terminal disclaimers, declarations, exhibits, etc.
Reviews and manages docket for U.S. and foreign deadlines, understands docket and deadlines and action needed on each file.
Reviews files and prepares information disclosure statement and accompanying documents.
Contacts outside vendors to follow-up on drawings, translations, certified copies, etc., for filing with the Patent and Trademark Office.
Retrieves information from USPTO website and other internet research.
Overall support for all aspects of portfolio management.
Stays current and compliant with MPEP and CFR rules and administrative changes at the USPTO.
Perform conflict checks and open new matter numbers for clients.
Prepare new client engagement letters.
Prepares conflict waiver letters.
Assists attorneys with time entries (Webview), expense reports, and invoice approvals.
Assists attorneys with other administrative tasks or special projects as needed.
Other duties as assigned.