US Patent Prosecution Specialist

ArentFox Schiff•Washington, DC

1d•$77,710 - $106,850

About The Position

The U.S. Patent Prosecution Specialist performs complex and specialized patent prosecution administrative work with minimal guidance for assigned clients. The role supports portfolio management, prepares and submits papers to the U.S. Patent and Trademark Office (USPTO), corresponds with clients and provides status updates, manages departmental deadlines and a personal docket, and monitors and updates workflows for assigned clients. The specialist ensures compliance with client and Firm policies and procedures and supports the IP Department in achieving client service and satisfaction.

Requirements

Minimum four-year college degree; related work experience may be used in lieu of formal education.
Minimum two years of experience in patent prosecution.
Knowledge of USPTO online sites and related websites.
Ability to meet or exceed departmental quality and quantity standards.
Strong accountability and ownership of projects and responsibilities, with proactive issue resolution.
Ability to work independently, meet deadlines, and manage multiple projects with competing deadlines.
Problem-solving skills and good judgment under pressure.
Ability to resolve issues and concerns proactively, constructively, directly, and respectfully.
Ability to assess risk-management issues and recognize when to seek assistance.
Positive, service-oriented attitude and commitment to teamwork.
Respect for the confidentiality of client information.
Ability to interpret written and oral instructions and synthesize complex and diverse information.
Meticulous attention to detail, accuracy, and thoroughness.
Ability to communicate effectively with all levels of management, staff, and timekeepers.
Strong technical aptitude and ability to learn new software applications quickly.
Proficiency in software applications related to the position, including Word and Outlook.
Reliability, flexibility, and dependability.

Nice To Haves

Knowledge of current U.S. patent prosecution and U.S. patent laws and rules.
Basic knowledge of Excel and PowerPoint.
Some knowledge of a docketing database.

Responsibilities

Prepare and electronically file documents with the USPTO, including applications, preliminary and 312 amendments, responses to notices, petitions, information disclosure statements, and issue fees.
Prepare basic patent documents for client execution, such as declarations, assignments, and powers of attorney, and file them with the USPTO.
Prepare and send client reporting letters regarding USPTO communications, including Formalities Notices, and USPTO filings.
Prepare and send reminders to clients regarding due dates and instructions.
Review application papers filed with the USPTO for accuracy and completeness, including inventors, assignees, and priority data.
Enter time and billing descriptions for completed tasks, if applicable.
Support portfolio management, manage departmental deadlines and a personal docket, and monitor and update workflows for assigned clients.
Correspond with clients and provide status updates.
Ensure compliance with client and Firm policies and procedures and support client service and satisfaction.