Patent Prosecution Specialist

Wilson Sonsini Goodrich & Rosati, Professional Corporation•San Diego, CA

6d•Hybrid

About The Position

Wilson Sonsini is seeking a Patent Prosecution Specialist to join their growing Patents and Innovation team. This role is responsible for managing client portfolios, including filings, correspondence, and docket management, under the guidance of attorneys and patent agents. The specialist will prepare, revise, and file all documents related to US patent prosecution, including new applications, missing parts, corrected application papers, office action responses, and other formal documents. They will also be responsible for timely reporting of all official correspondence and performing general office administrative functions. This position is available with a hybrid work schedule and requires the ability to work overtime when needed.

Requirements

5+ years of prior experience in a U.S. Patent Prosecution or Legal Assistant role.
Intermediate knowledge of all stages of patent prosecution and USPTO requirements, including rules, deadlines, and procedures.
Proficiency with U.S. and foreign patent office websites and the ability to research and locate data.
Knowledge regarding a calendaring system is required.
Strong knowledge of Microsoft products, database management systems, and electronic files.
Strong desire to learn new tasks and technologies.
Knowledge regarding aspects of patent prosecution and the United States Patent and Trademark Office's Patent Application Information Retrieval (PAIR) System, World Intellectual Property Organization (WIPO), European Patent Office (EPO), Orbit, foreign PTO sites, Electronic Filing System (EFS), and Patent Center databases.
Ability to work well under pressure.
Demonstrated ability to coordinate multiple competing tasks simultaneously and demands and adapt to various practice management styles.
Excellent analytical skills, with a strong ability to review and organize legal documents in complex legal matters.
Ability to demonstrate accuracy, attention to detail and strong organizational skills, and strong written and verbal communication skills.
Ability to review and proofread documents for grammar, spelling, proper language, and readability.
Ability to prioritize workflow independently and has exceptional time management skills and work ethic.
Demonstrate tact, diplomacy and discretion while handling information and responding to questions from staff, clients, attorneys, managers, and others.
Ability to follow firm policies and procedures while working remotely and in person.
Team player and willingness to provide back-up support to team members as required.
Ability to work overtime, as required.

Nice To Haves

Bachelor's degree and/or paralegal certificate is preferred.
Knowledge of Computer Packages Inc.'s (CPI) calendaring system is a plus.
Knowledge of CFR, MPEP and other patent-related laws and regulations.

Responsibilities

Manage client portfolios on behalf of assigned clients, including filings, correspondence, and docket management.
Prepare, revise, and file all documents related to US patent prosecution, including new patent applications, missing parts, corrected application papers, office action responses, and other formal documents.
Timely report all official correspondence regarding patent prosecution matters.
Perform general office administrative functions as necessary.
Handle complex filings for attorneys and staff and provide reliable suggestions and feedback.
Coordinate with IP professional staff, patent practitioners, and clients regarding assigned US patent prosecution matters.
Communicate with clients, examiners, and other parties regarding the status of applications and/or other related matters.
Maintain close communication with US and foreign paralegals to ensure deadlines are met.
Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes and provide timely reminders of upcoming dates.
Prepare, e-file, and report the filing of various legal documents maintaining structural and formatting requirements outlined in the MPEP, including applications (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, etc.
Prepare, e-file, and report handling of all associated formalities after filing new applications, including preparing formal documents such as Declarations, Powers of Attorney, Substitute Statements, and Assignments as required by each jurisdiction.
Obtain required signatures and follow up with clients as needed.
Report and handle all substantive USPTO actions with input from the Responsible Attorney, prepare draft amendments/responses to official actions, including Responses to Missing Parts, Report Notices of Allowance, address any inventorship/assignment issues, and prepare related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.).
Review and proofread documents from the USPTO (including Official Filing Receipts, Notices of Publication, Notices of Recordation, and Issue Notifications) and report those documents directly to the client. If required, prepare a request for correction, when applicable.
Prepare and forward reminders to clients regarding due dates and instructions.
Prepare correspondence regarding foreign filing/U.S. conversion deadlines.
Prepare correspondence regarding receipt of Letters Patent and Certificates of Correction and mail or ship document(s) to client.
Communicate with Harbor for preparation of sequence listings.
Order certified copies of Priority Documents.
Prepare simple formal drawings for applications.
Communicate with vendor for preparation of formal drawings; review drawings for accuracy and completeness prior to submission to the USPTO.
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.
Pull docket for assigned clients, maintain detailed annotations and review deadlines daily; maintain complete ownership of docket.
Monitor and follow-up on dates associated with the US and foreign docket, including clearing dates and providing follow-up with attorneys, clients, and management to provide adequate time to respond.
Clear daily docket reports in collaboration with the IP docket department and in accordance with established firm guidelines.
Perform research and compile data as requested by internal team members and clients.
Retrieve, review, and analyze information from various sources in a timely manner.
Assist legal staff with new business intake, including opening new patent prosecution matters and sub-matters.
Prepare Powers of Attorney (POA) for transferred cases.
Work with finance to obtain advance retainers.
Upload U.S. patent invoices as needed to account payable database.
Maintain electronic and physical files; update keep on top memos.
Retrieve, review, and analyze information from USPTO’s Patent Application Information Retrieval (PAIR) system.
Manage docket relating to US patent prosecution deadlines to ensure timely completion of required actions, including timely reminders and follow up with attorneys/staff to ensure docket actions and deadlines are met.
Responsible for meeting all assigned due dates.
Maintain a secondary docket of due dates for each assigned per established departmental guidelines.
Independently calculate deadline related to assigned matter and maintain independent calendar of said deadlines.
Review and monitor incoming US filing mail and ensure that critical items receive appropriate response and that deadlines are entered in secondary docket.
Review and clear docket reports provided by the IP Docketing Department in accordance with established firm guidelines.
Sustain working knowledge of changes in US patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes.
Enter daily fixed fees into database.
Perform other related duties as assigned.