US Patent Prosecution Specialist

Matura Farrington is currently seeking an US Patent Prosecution Specialist to support the busy IP practice of this A-tier national law firm. This is a highly demanding and regarded position that will manage a very busy workload including complex patent prosecution support work as well as specific client request and special projects. Therefore the US Patent Prosecution Specialist should be well organized, detailed, and efficient as there is minimal room for error in this position. The US Patent Prosecution Specialist will be involved in heavy filings of PCT applications, notice of allowance/IDS, billing, and client reporting. The US Patent Prosecution Specialist will communicate and work closely with an experienced IP Patent Support Team and will report directly to the US Patent Prosecution Support Manager.

 

All qualified candidates are encouraged to apply. Please see below for a list of responsibilities and qualifications. This is a great opportunity to work with a growing and extremely busy IP practice in the Los Angeles area. The firm is an A tier national firm offering a highly competitive salary and benefits package. This position will not be open long.

 

Responsibilities and Duties

 

  • Maintain and review patent docket daily to ensure timeliness of work performed. Keep timekeepers informed of upcoming due dates.
  • Prepare and EFS file documents at the USPTO, including Information Disclosure Statements, Amendment Responses, and Requests for Continued Examination, Powers of Attorney, Issue Fee payments, status checks, etc., and originate reporting letter to clients.
  • Review Notice of Allowance for compliance with regulatory formalities in the final stages prior to patent issuance.
  • Review and report receipt of U.S. and foreign communications to Firm clients.
  • Prepare draft Amendment/Detailed Comments shells and Analysis Letters.
  • Review papers being filed in the USPTO for accuracy and completeness regarding inventors, assignees, priority data, substance of filing, etc.
  • Perform foreign filing responsibilities, prepare and file PCT applications, transmittals, Demands for Preliminary Examination and responding to Invitations to Correct Defects or other PCT and foreign associate communications and originate reporting letter to clients.
  • Perform client portfolio audits and assist with client portfolio management.
  • Assist with additional duties as assigned by Firm timekeepers, Foreign Filing Specialists and management.

 

Qualifications:

 

  • Bachelor’s Degree in a field in which the necessary knowledge, skills and abilities relevant to the position were attained is required. Equivalent training and experience will substitute for formal education.
  • Minimum of three (3) years of directly related experience during which knowledge, skills and abilities relevant to the position were attained is required.
  • Demonstrated knowledge of U.S. patent prosecution with a board knowledge of post-allowance procedures.
  • Demonstrated knowledge of PCT filing procedures with a broad knowledge of PCT communication types.
  • Demonstrated interpersonal skills necessary to communicate and follow instructions effectively from a diverse group of clients, attorneys and staff and provide information with courtesy and tact.
  • Demonstrated ability to organize and prioritize a heavy workload in a dynamic and complex environment to meet deadlines and daily requirements, while maintaining exceptional accuracy.
  • Demonstrated ability to analyze and interpret information from a variety of sources, apply critical and creative thinking to draw conclusions or develop solutions to complex problems.
  • Demonstrated advanced PC knowledge in MS Word, PDF conversion tools, MS Outlook, and document management software.
  • Intermediate knowledge related to use of equipment including scanners, copiers, and facsimile machines. Intermediate knowledge of MS Excel, PowerPoint, computerized docketing, and billing systems.
  • Ability to lead others effectively in a team or cooperative environment to complete small/medium-scale projects and to reach established goals and objectives in a timely manner.
  • Reliability, dependability, and flexibility regarding work schedule is required.

 

Salary is highly competitive, depending on experience. Qualified candidate should contact Shadrac Cadeau at 213-996-3738 or at shadrac@matfar.com regarding Job order # 29047

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