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Job Details

Ip Patent Prosecution Specialist quality Control

Experience
3 yrs required

Location
Palo Alto, CA, United States

Posted on
Dec 01, 2022

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Profile

IP Patent Prosecution Specialist (Quality Control)
The candidate will coordinate with IP professionals and patent practitioners to review IDS filings and ensure accuracy and completeness. Will complete quality control checklists to ensure compliance with the firm’s risk management directives and best practices, as well as USPTO and international rules and regulations. Triage incoming IDS filings to be reviewed, prioritizing as necessary and communicating expected turnaround time to the IP professionals and practitioners. Provide late filing assistance and extended coverage for other PPS team members. Oversee IDS management for assigned client patent portfolios. Review daily and weekly custom PPS docket reports and update notes in Inprotech events. Create and maintain complex client IDS spreadsheets in Excel and corresponding records in IDS support software (MaxIDS). Prepare IDS forms and collect and clean electronic copies of prior art references. Monitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art references. Perform pre-examination, examination, and post-allowance IDS reviews. Assist with re-examination petitions to include organization of prior art for IDS’s. Provide foreign associates with prior art lists to fulfill information requirements for jurisdictions such as Israel, in order to ensure complete disclosure of relevant references. Regularly monitor USPTO Patent Application Information Retrieval (PAIR) and other databases to verify status of client patent assets and, upon request, competitor patent assets. Independent docket review, and IDS workflow coordination with the client service team with respect to meeting upcoming deadlines. Conduct Patent Term Adjustment (PTA) reviews, prepare Letters of Candor and/or Requests for Reconsideration, as required. Assist with diligence projects and chain-of-title research/assignment issues. Conduct patent searches using various firm-subscribed databases and public data and prepare and update monitoring spreadsheets upon request. Prepare patent family trees in Visio. Prepare and maintain patent portfolio status charts. Respond to requests from clients’ auditors for audit letters and follow internal audit letter procedures. Perform tasks in connection with patent opinions (e.g., conduct timekeeper opinion poll, prepare chain of title chart, patent schedule, Officer’s Certificate, and back-up checklist). Assist with US and foreign name change projects, as directed. Must have 3+ years experience in an IP-related role. Should preferably have Bachelor’s degree. Previous law firm experience is desired. Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions is a plus. Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP).

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