Patent Prosecution Specialist

Profile

Patent Prosecution Specialist

The candidate will provide technical and administrative support to attorneys, professional specialists, paralegals and clients in all aspects of patent prosecution and IP practice management. Handle daily dockets of assigned attorneys and professional specialists. Coordinate with timekeepers to ensure all deadlines are met on a daily basis. Perform electronic filings with the United Stated Patent and Trademark Office (USPTO). Manage new business intakes. This includes submitting new client, matter and pro bono intakes requests, complete billing information and track status. Prepare and file USPTO applications (i.e. provisional, non-provisional and continuing applications.) Prepare and file follow-on submissions, such as preliminary amendments, responses, requests for continued examination, missing parts and issue fee payments. Prepare and file formality and other relevant USPTO documents (i.e. assignments, declarations and powers of attorney). Prepare related client correspondence in accordance with firm/client guidelines. Prepare and file Information Disclosure Statements. Manage incoming USPTO mail and other related correspondence. Handle phone, email and calendars for assigned timekeepers, ensuring all details are anticipated, arranged and well-coordinated. Maintain knowledge of the status of ongoing client matters and keep up-to-date contact lists, anticipate next steps and prepare for them in advance. Report correspondence accurately and timely, and in accordance with firm/client guidelines. Respond to client inquiries and requests for information and provide status reports as needed. Maintain accurate electronic files in accordance with firm/practice group guidelines and procedures. Assist with processing any incoming/outgoing file transfers. Promptly perform administrative tasks (i.e. expense reimbursement, business development, etc.) in InterAction, Chrome River and other firm applications. Assist with monthly billing and provide documentation and edits. Perform other duties as assigned. High School Diploma or equivalent experience is required. College Degree is preferred. Should have 3-5 years of patent prosecution experience, preferably within a law firm or professional services environment.

Additional Information

Job ID: 3730

Company info

Nixon Peabody LLP
70 West Madison Street
Chicago
Illinois
United States 60602
Phone : 312-977-4400
Fax : 312-977-4405
Website : https://www.nixonpeabody.com/