IP Citation Filing Specialist

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Under general supervision, the IP Citation Filing Specialist provides assistance to the Intellectual Property practice group and respective case team, with respect to coordinating the Citation and Information Disclosure Statement (IDS) process.

Job Functions:

Responsible for the preparation, maintenance and submission of all Information Disclosure Statements which includes gathering all necessary references and citation translations, preparing “fit‐to‐file” PDFs, Section 18 responses, Annexures to Form 3 and coordinating responses with US Filing Specialist, monitoring deadlines to ensure all deadlines are met; complying with client instructions, firm procedures, USPTO and foreign requirements (e.g. IL, CA, NZ, IN).

Responsible for the coordination of specification reviews (working with practitioners) for IDS submissions.

Preparation of draft reporting for QC Paralegal review of “non‐action” items.

Assisting practitioner with identifying links between inventions cross‐cited across patent families to help determine citation strategy for linking dockets (i.e. subject matter linking, sister dockets, etc.).

Back‐fill citations for transfer‐in cases.

Essential Competencies:

Works proactively with others to support efforts within the department to improve efficiency and add value.

Organizes and prioritizes assignments and contributes to the department’s ability to meet or exceed goals and standards.

Maintains strong understanding of Patent and Trademark rules of practice (37 CFR).

Uses innovative thinking and exercises sound judgment.

Qualifications:

Minimum of three years’ patent prosecution support experience is required, with 1-2 years’ experience with the Citation and IDS process.

Familiar with USPTO procedures, rules and requirements.

Ability to utilize IP Software with the demonstrated ability to learn new technology, processes and procedures effectively and with confidence.

Strong attention to detail and ability to produce work quickly, by prioritizing assignments to meet deadlines.

Must be able to work in fast paced environment, independently, as well as in team setting.

Exceptional communication (both written and verbal) skills.

Demonstrated commitment to providing superior client service.

Proficiency in all Microsoft Office products is essential.

Bachelor Degree, or equivalent experience.

Physical Requirements:

Must have minimal physical mobility. Position may occasionally require standing, walking, reaching, and lifting up to 15 pounds.

Must have the ability to operate equipment such as a computer and copy machine.

Must have the ability to communicate clearly and to read and follow detailed instructions.

Must have the ability to prepare assorted documents and other related materials.

Must have the ability to work in stressful conditions under time deadlines.

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Choate, Hall & Stewart LLP

Two International Place

Boston, MA 02110

T 1 (617) 248-5000

© 2021 Choate, Hall & Stewart LLP

Company info

Choate Hall & Stewart LLP.
Phone : 1-(617)-248-5000
Website : https://www.choate.com/