Patent Prosecution Specialist

Wilson Sonsini•San Diego, CA
•$35 - $48

About The Position

Wilson Sonsini is seeking a Patent Prosecution Specialist to join its Patents and Innovation team. The role manages assigned client portfolios, including U.S. patent filings, correspondence, and docketing, under the direction of attorneys, patent agents, IP specialists, and department leadership. The specialist prepares, revises, files, and reports documents for all stages of U.S. patent prosecution and handles related client service, docket administration, and general office tasks. The position requires availability for overtime when needed. It may be performed on a hybrid or fully remote schedule, with work hours of 9:00 a.m. to 5:00 p.m. Pacific Time. The role includes managing prosecution deadlines and secondary docket calendars, reviewing USPTO correspondence, preparing and filing applications and responses, coordinating formalities and signatures, communicating with clients and patent professionals, and maintaining portfolio records and files. The specialist also supports intake, billing and finance-related tasks, research, and procedural updates. The listed primary location is San Diego, with other locations potentially available. The anticipated pay range for San Diego, Boulder, Century City, Los Angeles, and other locations is $35.14–$47.55 per hour. Compensation may include overtime and a discretionary year-end merit bonus based on performance.

Requirements

  • At least 5 years of prior experience in U.S. patent prosecution or as a legal assistant, with intermediate knowledge of patent prosecution stages and USPTO requirements, rules, deadlines, and procedures.
  • Knowledge of or ability to learn and apply the Code of Federal Regulations (CFR), the Manual of Patent Examining Procedure (MPEP), and other patent-related laws and regulations.
  • Proficiency with U.S. and foreign patent office websites and ability to research and locate data.
  • Knowledge of a calendaring system.
  • Strong knowledge of Microsoft products, database management systems, and electronic files.
  • Knowledge of patent prosecution and relevant systems and resources, including USPTO PAIR, WIPO, EPO, Orbit, foreign PTO sites, EFS, and Patent Center.
  • Ability to handle complex filings and provide reliable suggestions and feedback.
  • Ability to work under pressure, coordinate competing tasks, and adapt to different practice management styles.
  • Strong analytical skills and ability to review and organize documents in complex legal matters.
  • Accuracy, attention to detail, organizational skills, and strong written and verbal communication skills.
  • Ability to review and proofread documents for grammar, spelling, appropriate language, and readability.
  • Ability to independently prioritize workflow and demonstrate strong time management and work ethic.
  • Tact, diplomacy, and discretion when handling information and responding to staff, clients, attorneys, managers, and others.
  • Ability to follow firm policies and procedures while working remotely and in person.
  • Team-oriented approach and willingness to provide backup support to team members.
  • Ability to work overtime as required.

Nice To Haves

  • Bachelor's degree and/or paralegal certificate preferred.
  • Knowledge of Computer Packages Inc. (CPI) calendaring system is a plus.

Responsibilities

  • Manage assigned client portfolios, including filings, correspondence, and docket management.
  • Prepare, revise, electronically file, and report documents related to U.S. patent prosecution, including applications, office action responses, petitions, disclaimers, and other formal documents.
  • Review USPTO correspondence and filing documents for accuracy, report them to clients, and prepare correction requests when needed.
  • Coordinate with attorneys, patent agents, IP professionals, clients, U.S. and foreign paralegals, vendors, and USPTO offices regarding assigned matters and deadlines.
  • Prepare and follow up on post-filing formalities, including declarations, powers of attorney, substitute statements, assignments, and obtaining signatures.
  • Draft correspondence and reminders regarding due dates, client instructions, foreign filing and U.S. conversion deadlines, issued patents, and certificates of correction.
  • Coordinate sequence listings and formal drawings, including reviewing drawings for accuracy and completeness; prepare simple formal drawings when needed.
  • Order certified copies of priority documents and retrieve, review, and analyze information from USPTO systems and other sources.
  • Maintain client dockets, annotations, independent deadline calendars, secondary dockets, files, and daily docket reports; monitor and follow up on U.S. and foreign deadlines.
  • Support client portfolio management and respond to client calls and emails in accordance with client-specific reporting guidelines.
  • Assist with new business intake, opening patent prosecution matters and sub-matters, and preparing powers of attorney for transferred cases.
  • Coordinate with finance to obtain advance retainers and upload U.S. patent invoices to the accounts payable database.
  • Enter daily fixed fees into the database and maintain electronic and physical files and keep-on-top memoranda.
  • Research and compile data for internal team members and clients.
  • Maintain knowledge of U.S. patent prosecution rule changes and suggest procedural modifications in coordination with management.
  • Perform other related duties as assigned.

Benefits

  • Competitive salary and benefits package.
  • Compensation may include overtime.
  • Discretionary year-end merit bonus based on performance.
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