Ip Us amp Citation Filing Specialist

Profile

IP US & Citation Filing Specialist

The candidate provides assistance to the Intellectual Property practice group and respective client service team, with respect to domestic patent filings and Information Disclosure Statements. Prepares and filings of all US applications (including 371 applications) and responses, which includes gathering all necessary information, monitoring and maintaining applications pre‐and post‐exam; complying with client instructions, firm procedures, and USPTO foreign requirements (as they relate to 371 applications). Proactively manages US prosecution docket actions, ensuring all deadlines are met. Prepares and files formalities (e.g., declarations, assignments, powers of attorney, rights of assignee, small entity statements), send to clients for signature, track statuses through submission, provide necessary follow‐up, and file with the USPTO. Prepares shells for all US responses. Prepares, maintains and submits 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). Preparation of drafts reporting. 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. Bachelor Degree, or equivalent experience is required. Should have 4 years’ working knowledge of U.S. patent prosecution procedures and regulations, with 1-2 years’ experience with the Citation and IDS process.

Company info

Choate Hall & Stewart LLP.
Two International Place
Boston
Massachusetts
United States 02110
Phone : 617-248-5000
Fax : 617-248-4000
Website : https://www.choate.com/