IP US Filing Specialist (Quality Control)

Cooley LLP•Washington, DC

20d•$44 - $64•Hybrid

About The Position

Cooley is seeking an IP US Filing Specialist (Quality Control) to join the IP Services team. The Specialist is responsible for carrying out quality control (QC) functions associated with US patent filings. The Specialist also carries out the full duties and responsibilities of a US Filing Specialist in providing full support to patent attorneys, agents, and clients in filing and maintaining US applications and patents.

Requirements

Proficiency in the Microsoft Office suite, iManage and other firm applications
Available to work overtime, as required
3+ years experience in an IP-related role
Excellent attention to detail
Strong verbal and written communication skills
Ability to organize, prioritize and coordinate multiple activities
Strong judgment
Team-player with collaborative spirit
Unwavering ability to handle and maintain confidentiality regarding firm information, projects, client data (if applicable)
High level of professionalism at all times

Nice To Haves

Bachelor’s degree
Previous law firm experience
Direct responsibility for carrying out quality control functions associated with US patent filings
Experience researching IP status and history in PTO databases, including USPTO systems (PatentCenter), WIPO Patentscope and, the EPO Patent Register, as well as public databases in other jurisdictions
Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules

Responsibilities

Coordinate with IP professional staff and patent practitioners to ensure the accuracy, completeness, and timeliness of US patent filings
Complete quality control checklist to ensure compliance with the firm’s risk management directives and best practices
Triage incoming US filings to be checked, prioritizing as necessary and communicating expected turnaround to the filing USFS and practitioners
Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters
Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; forward all USPTO mail to Client Team and provide timely reminders of upcoming dates
Prepare and review required documents for filing; upload of same with the USPTO all US patent prosecution filings, including applications, (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, issue fee payments, etc.
Prepare, file and report of US formalities (e.g., POAs, assignments, declarations, drawings), and non-substantive USPTO documents, such as filing receipts, publications, along with preparation of reminder letters to clients of upcoming deadlines
Handle and report all substantive USPTO actions with input from Responsible Attorney, including preparing draft amendments/responses to official actions and notices to file missing parts, obtaining identified references, processing notices of allowance including attending to the Notice of Allowance Review Form in coordination with the Patent Prosecution Specialist and Patent Practitioner, addressing any inventorship/assignment issues, and preparing related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)
Proof and forward Letters Patent to the client
Provide client support for portfolio management, including accommodating client-specific reporting guidelines, and responding to client phone calls and/or emails relating to specific requests or reports
Sustain working knowledge of US patent prosecution rules and recommend procedural modifications to accommodate changes, as needed
Maintain a secondary docket of due dates for each assigned client as outlined in the Patent Prosecution Policies and Procedures Manual
Review docket reports and provide detailed annotations related to upcoming dates daily
Complete administrative tasks including maintenance of client data rooms, responding to deadlines and changes to dockets, along with other communication with the central Docketing Department, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
Communicate regularly with the assigned Patent Prosecution Specialist (PPS) regarding the timing of filing IDSs, as well as reporting any IDS filed to the client