IP Specialist

DLA Piper • Philadelphia, PA

504d • Remote

About The Position

As an IP Specialist at DLA Piper, you will provide essential administrative and patent prosecution support to the prosecution practice group. This role involves preparing and finalizing various patent application documents, managing deadlines, and ensuring compliance with USPTO rules. You will work in a hybrid environment, primarily based in the Philadelphia office, with flexibility for remote work.

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.
• Proven administrative abilities, excellent judgment, and the ability to handle multiple time-sensitive tasks in a fast-paced environment.
• Punctuality is a must.
• Candidate must be able to work independently, as well as be a team player.
• Strong computer skills are required, including Microsoft Word, Excel, and Outlook.
• Knowledge of law firm billing programs (Webview) and patent docketing software (OP Solutions Pattsy) helpful.

Nice To Haves

• 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 client 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.
• Coordinates with 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.
• Provides overall support for all aspects of portfolio management.
• Stays current and compliant with MPEP and CFR rules and administrative changes at the USPTO.
• Performs conflict checks and opens new matter numbers for clients.
• Prepares 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.

What This Job Offers

• Job Type: Full-time
• Industry: Professional, Scientific, and Technical Services
• Education Level: High school or GED