Patent Transfer Specialist

Wilson Sonsini • Washington, DC

2d • $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 Transfer Specialist to join our Patents and Innovation team. This role is responsible for assigned tasks and works under the direction and guidance of attorneys, patent agents, IP specialists, and the department leadership team. The Patent Transfer Specialist reviews and processes incoming patent files according to established patent file transfer procedures. This is done to ensure accurate and timely processing of client files by the Patents and Innovations Department. The Patent Transfer Specialist audits incoming patent files to assess the status of prosecution and upcoming deadlines. Moreover, they work closely with the Docketing Department to ensure the accuracy of bibliographic data and due dates inputted into the docket system of incoming patent transfer files. Additionally, the Patent Transfer Specialist may assist with the preparation and filing of formal and other prosecution documents for incoming patent transfer files. The Patent Transfer Specialist must have in-depth knowledge of the firm's procedures for client intake, docketing, and records management along with extensive experience in patent prosecution. This position is available as both a hybrid and fully virtual work schedule.

Requirements

• Ability to apply patent prosecution knowledge and independent judgement to manage complex client file transfers and ensure timeliness of the transfer
• Coordinate with IP professional staff, patent practitioners and clients with respect to incoming and outgoing transfer matters
• Responsible for coordinating with the client and/or predecessor counsel to verify receipt and completeness of all prosecution records required to successfully intake patent matters, including docketing deadlines and data required to obtain power of attorney
• Ability to independently identify missing or incomplete prosecution records and escalate or resolve issues prior to docketing
• Ability to demonstrate judgement in prioritizing high-risk transfers, managing imminent deadlines, and preventing downstream docketing errors
• Advanced knowledge of U.S. and foreign patent prosecution workflows, including intake risk assessment, continuity review and deadline validation
• Strong familiarity with CFR, MPEP and other patent-related laws and regulations, and engage in research when required
• The position requires the ability to work on moderately complex to complex tasks requiring good judgement in resolving issues and making recommendations for how to resolve problems
• Routinely perform supplemental/additional review of docketed work
• Help with training and mentoring more junior transfer staff
• Respond to questions and troubleshoot issues from the attorneys, staff and other ancillary departments in relation to docketing of due dates
• Bachelor's degree and/or paralegal certificate is preferred
• 5+ years of prior experience in a U.S. and foreign patent prosecution, with high-level knowledge of rules, deadlines, and procedures
• Proficiency with U.S. and foreign patent office websites and the ability to research and locate data
• Advanced paralegal, formalities and IP docket experience and working knowledge of billing and records software
• Knowledge regarding a calendaring system is required and knowledge of Computer Packages Inc.'s (CPI) calendaring system is a plus
• 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
• Advanced computer skills including proficiency in Microsoft Office, Outlook, and Excel
• Strong desire to learn new tasks and technologies
• Ability to work well under pressure and demonstrated ability to coordinate multiple competing tasks simultaneously and demands and adapt to various practice management styles
• Demonstrate accuracy, attention to detail and strong organizational skills, and strong written and verbal communication skills
• Exceptional time management skills and work ethic
• Excellent analytical skills, with a strong ability to review and organize legal documents in complex legal matters
• Ability to review and proofread documents for grammar, spelling, proper language, and readability
• Ability to prioritize workflow independently and efficiently
• Demonstrate tact, diplomacy and discretion while handling information and responding to questions from staff, clients, attorneys, managers, and others
• Basic knowledge of office organization, workflow, and procedures
• Ability to follow firm policies and procedures while working remotely
• Ability to work independently in a forward-thinking team environment
• Able to keep abreast of practice area processes as appropriate to the position
• Team player and willingness to provide back-up support to team members as required
• Ability to work overtime, as required

Responsibilities

• Manage complex client file transfers and ensure timeliness of the transfer
• Coordinate with IP professional staff, patent practitioners and clients with respect to incoming and outgoing transfer matters
• Coordinate with the client and/or predecessor counsel to verify receipt and completeness of all prosecution records required to successfully intake patent matters, including docketing deadlines and data required to obtain power of attorney
• Independently identify missing or incomplete prosecution records and escalate or resolve issues prior to docketing
• Demonstrate judgement in prioritizing high-risk transfers, managing imminent deadlines, and preventing downstream docketing errors
• Routinely perform supplemental/additional review of docketed work
• Help with training and mentoring more junior transfer staff
• Respond to questions and troubleshoot issues from the attorneys, staff and other ancillary departments in relation to docketing of due dates

Benefits

• We offer a highly competitive salary and benefits package.
• Benefits information can be found here.

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level