Job Details

Senior Patent Prosecution Specialist

Company name

Organization Type

In-House

Job Type

Legal Staff

Location

North Brunswick, NJ

Date Last Verified

Aug 20,2017

Posted on

Jun 13,2017
Practice Area
Intellectual Property >> Intellectual Property - Trademark/Copyright
Intellectual Property >> Intellectual Property - General
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Senior Patent Prosecution Specialist Duties: Helps protect the company’s valuable as necessary) as support for filing, preparing, and prosecuting US and foreign patent application and growing intellectual property by working with legal department (and potentially inventors trademark filings, providing high quality in-house capacity for patent prosecution, aiding in patent searches and competitive patent assessments, managing patent and trademark dockets and high level summaries, and overseeing outside annuity payment services. Provides accurate docketing and filing of patent and trademark related documents. Preparation of formal documents for the US Patent and Trademark Office (USPTO). Oversees and reviews ongoing general searches and specific watches on competitors’ patent families of interest. Maintain and organize the departments intercompany agreements database; this includes keeping track of amendments, terminations, etc. Coordination with internal and external legal counsel and patent agent. Receives, analyzes and dockets all incoming correspondence from US Patent Office. Independently execute the following tasks and responsibilities: review and prepare patent applications for filing with USPTO and WIPO via e-filing; prepare and review formal documents, such as declarations, assignments and powers of attorney for submission to the USPTO, WIPO and foreign Patent Offices. Initiate, prepare and review IDSs, preliminary amendments, instructions and other submissions in response to actions issued by Patent Offices; generate and monitor attorney dockets to ensure all deadlines receive attention; maintain patent files, documents and online shared folders; prepare queries, reports and dockets Lead, train or direct other internal and external resources, if necessary. Participate in projects as assigned when needed; and oversee administrative aspects of portfolio management. Draft SOPs and procedures; review or validate -work of internal and external colleagues and partners, if necessary. Drafts transmittal letters and standard memoranda, reviews and proofs all outgoing materials to US Patent Office with attention to detail. Responsible for communication with annuity payment provider. Confirmation and review of annuity payments in conjunction with IP counsel. Work closely with in-house legal team and train/mentor support staff.

Qualification and Experience

Requirements: Patent paralegal certificate or equivalent preferred. Strong knowledge of USPTO, PCT and WIPO rules, regulation and systems. Demonstrates ability to gather facts and conduct research with little direction, then prepare draft summaries for senior legal professionals and patent agent General computer proficiency with Windows applications, specifically MS Word, Excel, and PowerPoint Strong attention to detail. Excellent communication skills, both oral and written. Ability to handle and prioritize multiple projects simultaneously. Knowledge of domain name registrations, trademarks and copyrights.

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