Patent Prosecution Specialist

Wilson Sonsini Goodrich & Rosati, Professional Corporation•Palo Alto, CA

1d•$35 - $53•Hybrid

About The Position

Wilson Sonsini is the premier legal advisor to technology, life sciences, and other growth enterprises worldwide. We represent companies at every stage of development, from entrepreneurial start-ups to multibillion-dollar global corporations, as well as the venture firms, private equity firms, and investment banks that finance and advise them. The firm has approximately 1,100 attorneys in 17 offices: 13 in the U.S., two in China, and two in Europe. Our broad spectrum of practices and entrepreneurial spirit allow exceptional opportunities for professional achievement and career growth. The firm is actively looking for a Patent Prosecution Specialist to join the Patents and Innovations team. This position is responsible for assigned tasks and works under the direction and guidance of attorneys, patent agents, IP specialists, and the department leadership team. In this role, the Patent Prosecution Specialist manages client portfolios on behalf of the assigned clients, including filings, correspondence, and docket management. It is the job of the Patent Prosecution Specialist to prepare, revise, and file all documents related to US patent prosecution. It includes new patent applications, missing parts, corrected application papers, office action responses and other formal documents, as well as to timely report all official correspondence regarding the same. In addition, the Patent Prosecution Specialist must perform any other general office administrative functions as necessary. This position is available for either a hybrid work schedule or fully virtual.

Requirements

Bachelor's degree and/or paralegal certificate is preferred
Minimum 5 years of prior experience in a U.S. Patent Prosecution or Legal Assistant role, with 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 and knowledge of Computer Packages Inc.'s (CPI) calendaring system is a plus
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 and 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

Responsibilities

Handle complex filings for attorneys and staff and provides reliable suggestions and feedback
Strong familiarity with CFR, MPEP and other patent-related laws and regulations, and engage in research when required
Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters
Communicate with clients, examiners, and other parties regarding 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; provide timely reminders of upcoming dates
Prepare, e-file, and report filing of various legal documents maintaining structural and formatting requirements outlined 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 to include, but not limited to prepare 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, prepares 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
Review and understand rules in Code of Federal Regulations (CFR) and Manual of Patent Examining Procedure (MPEP)
Knowledge of Patent Center, Electronic Filing System (EFS), and Electronic Patent Assignment System (EPAS)
Contact the Applications Assistance Unit, Electronic Business Center or Assignment branches of the USPTO, as needed
Manage docket relating to US patent prosecution deadlines to ensure timely completion of required actions, including timely reminders and follow up w ith 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