Patent Specialist

Profile

Job Title:
Patent Specialist

Job Overview:
A Washington, D.C.-based law firm seeks a highly experienced Patent Prosecution Specialist to join its intellectual property practice. This position will involve comprehensive support for domestic and international patent prosecution processes, including administrative coordination, document preparation, and client communication. The ideal candidate will bring substantial experience managing patent filings and compliance with U.S. and international intellectual property office procedures.

Duties:

• Handle the preparation and submission of U.S. and foreign patent filings, including utility, provisional, divisional, continuation, and national phase applications

• Coordinate the preparation and filing of Information Disclosure Statements (IDS), including certifications and related fees

• Track and report on official notices and pre-examination communications such as Filing Receipts, Notices of Publication, and Notices to File Missing Parts

• Liaise with the USPTO's Application Assistance Unit to address application status inquiries and resolve procedural issues

• Review and manage responses to examination communications (e.g., Office Actions, Advisory Actions, Restriction Requirements)

• Support attorneys and agents in drafting and filing prosecution-related submissions using the USPTO’s Patent Center

• Oversee pre-issuance activities such as responding to Notices of Allowance and ensuring timely Issue Fee payments

• Assist with patent term adjustments and issuance-related documents, including Certificates of Correction and Letters Patent

• Maintain and monitor patent docket systems for daily, weekly, and monthly deadlines

• Serve as a communication point for clients and foreign associates regarding prosecution matters

• Provide backup support across the patent team when needed

Requirements:

• Minimum of 7 years of experience supporting patent prosecution in a law firm or similar setting

• Advanced understanding of USPTO rules and procedures (37 CFR and MPEP)

• Experience coordinating filings through the World Intellectual Property Organization and foreign patent offices is preferred

• Demonstrated ability to manage high volumes of information with a high degree of accuracy and organization

• Capable of working independently with limited supervision and managing multiple priorities simultaneously

• Must be able to protect confidential client information with discretion

Education:

• Bachelor’s degree preferred; equivalent experience considered

Certifications:

• No specific certification required, though paralegal or IP-related credentials are a plus

Skills:

• Proficiency with patent docketing software and electronic filing systems (USPTO Patent Center)

• Strong written and verbal communication abilities

• High attention to detail and analytical thinking

• Adept at interacting with internal legal teams, external clients, and foreign associates professionally

• Reliable and consistent attendance

Job Location:

• Washington, DC

Benefits:

• Comprehensive health, dental, and vision insurance plans

• Generous paid time off and holiday leave

• 401(k) with employer match

• Flexible work environment with potential for hybrid scheduling

• Professional development support

• Wellness programs and employee assistance resources

Company info

BCG Attorney Search
1629 K ST NW, Suite 300
Washington
District of Columbia
United States 20006
Phone : (202) 955-5585
Fax : (213) 895-7306