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Patent Specialist

Location
Oakland, CA, United States

Posted on
Nov 17, 2022

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Patent Specialist
The candidate will support activities related to application formalities, preparing and filing correction of inventorship with the USPTO, coordinating requests to update inventorship in foreign jurisdictions, and tracking status of formal documents. Assist the Patent Operations Specialist with monthly shipment of formal documents to inventors with special contact guidelines. Prepare formal documents including Assignments, Declarations, Substitute Statements and other documents as required in foreign jurisdictions. Send formal documents to inventors for signature in accordance with guidelines and procedures. Track receipt of formal documents and follow up with inventors until all signatures are received. Respond to client’s monthly report regarding status of formal documents. Record Assignments and file Declarations with the USPTO. Prepare correction of inventorship pursuant to patent office rules, including preparation and filing of corrected ADS for Correction of Inventorship in US applications, preparation and filing of 92bis requests in PCT Applications, and coordinating notary and legalization of documents as required in foreign jurisdictions. Ensure firm docketing software accurately notes the status of Assignments and Declarations. Update inventor lists in client IPMS. Maintain information contained in the Master Inventor List. Maintain file integrity, both the electronic and paper files. Assist with miscellaneous client-related projects. Other duties may be assigned to fully meet the requirements of the position. Bachelor’s degree or previous patent legal experience is preferred. Experience with iManage, Adobe Acrobat Pro, Inprotech, First to File is a plus. Knowledge of PCT patent rules and procedure; knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein is preferred. Knowledge of the USPTO website, including PAIR, EFS and EPAS and related websites is preferred.

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