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Organization TypeLaw Firm
Years of Experience
Date Last Verified
ProfilePatent Specialist Duties: Operate as part of a team of attorneys and support staff and will assume ownership for all aspects of file management to ensure a high level of service to both internal and external clients. Assist with all aspects of U.S. patent prosecution including applications, responses, transmittal documents, etc.; collaborate with attorneys and paralegals as needed. Assist in drafting correspondence to clients regarding status of applications and patents. Review and manage files and docket for deadlines, understand docket and deadlines and action needed on each file; prepare shell prosecution documents. Electronic filing with USPTO. Act as a single point of contact for the client and providing assistance with incoming files to ensure accuracy and completeness. Assist with proforma review, edits, and finalization. Provide back-up support to team, and project assistance as needed. Other tasks as assigned, including billing portions of time.
Qualification and Experience
Qualifications: Four year degree or equivalent law firm experience; Paralegal certificate from ABA approved program. Biotech/Chemistry/Life Science experience preferred. 5+ years of IP experience preferred. Familiarity with iManage and FoundationIP a plus. Proficiency with Microsoft Office Suite and other software including Outlook, Word, Excel, PowerPoint, Timekeeping Software, Adobe Acrobat, and Visio. Familiarity with USPTO (U.S. Patent and Trademark Office) procedures, rules and requirements; knowledge of U.S. and PCT patent rules and procedures. Understand lifecycle of patent applications from pre-filing stages, to prosecution, onto issuance. Excellent client service skills; ability to work in fast-paced environment; ability to perform well under pressure; excellent organizational skills; ability to work independently; possess effective written and oral communication skills; able to meet deadlines. Minimum of two years’ experience as a patent prosecution paralegal, legal secretary or comparable position with experience working in a law firm or in house legal environment; experience with Electronic Filing USPTO procedures. Ability to work productively with firm personnel at all levels and with minimal supervision. Must be flexible with work hours and overtime as needed.