Patent Specialist

Profile

Patent Specialist

The candidate will prepare and file new applications with the USPTO, WIPO, and foreign associates, along with all other associated prosecution filings. Prepare, review, and file PTO communications including, but not limited to, new applications; Office Action responses, Information Disclosure Statements, assignments and related ownership transfers, and the like. Manage specific clients’ Extranet systems to access and communicate all correspondence, PTO filings, and PTO mail. Review daily docket and deadlines. Order documents, file histories, certified copies, etc.. Maintain current knowledge of IP rules and procedures. Assist in other duties/special projects as assigned by supervisor or requested by lawyers. Perform a variety of foreign prosecution-related tasks such as preparation and filing of PCT applications and all associated non-U.S. prosecution filings. Enter national and regional stage and all associated formality requirements specific to each country. Prepare and send necessary communications directly to foreign associates in order to manage and maintain foreign prosecution matters. Report mail associated with foreign filings to the client. Report, issue, and docket in own Outlook calendar soft deadlines (deadlines to provide client recommendation) when reporting foreign mail with a deadline. Send reminders to attorneys related to soft deadlines. Review daily docket and deadlines. Analyze issued U.S. patents for proper Patent Term Adjustment. Use patent analytical software to research and compile worldwide patent portfolio data. Provide costs estimates using Global IP Estimator. Order documents, file histories, certified copies, etc.. Maintain current knowledge of all foreign IP rules and procedures. Assist in other duties/special projects as assigned by supervisor or requested by lawyers. Create letters, legal documents, and memos in Word, spreadsheets in Excel, slide shows in PowerPoint; create and work with tables; create tables of contents; use spell-check and thoroughly proofread content of all documents. Enter, edit, and track daily time in the firm’s time entry application according to required deadline. Work with attorneys and other legal secretaries in reviewing and editing proformas and work with Accounting to finalize and submit client invoices on a timely basis. In Outlook, manage inbox (creating folders), manage calendar, set-up meetings electronically, manage contacts, work and search in the firm’s document management system and understand and set-up distribution lists. Prepare preparation of check requests and firmwide expense reports accurately and promptly. Possess knowledge of and apply high level of detail to file openings and conflict checks using the firm’s online file opening system. Possess working knowledge of the firm’s record management system to store and retrieve hard copy documents, create labels, request folders, store and retrieve electronic documents, and store and retrieve e-mails. Assist other secretaries and Patent Specialists with overflow work and provide backup support during vacations, leaves of absence, etc.. Coordinate and verify travel arrangements with the service providers and process related business expense reimbursements. Schedule meetings, book conference rooms, video conferences and Webexes. High school diploma or equivalent experience is required; college degree is preferred. Knowledge and understanding of Intellectual Property basic legal terminology is required.

Company info

K & L Gates LLP
210 Sixth Avenue
Pittsburgh
Pennsylvania
United States 15222-2613
Website : http://www.klgates.com