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Organization TypeLaw Firm
Years of Experience
Date Last Verified
Patent Prosecution Specialist Duties: Provide specialized patent support (including client management support where applicable) to assigned clients in the patent prosecution and counseling practice group. Oversee IDS management for assigned client patent portfolios, often with independent initiative; review daily and weekly custom PPS docket reports provided by the central Docketing Department; create and maintain complex client IDS matrices in Excel; collect references for citation and prepare IDS forms; prepare and maintain patent family groupings by conducting research for patent family tree information and working with partners/attorneys/agents to identify and specify related subject matter in multiple trees for cross-citation purposes; review all incoming U.S. Patent and Trademark Office (USPTO) and non-U.S. patent correspondence in respective client portfolios to assess need for preparation of new IDS’s in related, co-pending U.S. applications pursuant to IDS matrices; prepare correspondence to foreign associates in jurisdictions with prior art disclosure requirements to ensure complete citation of relevant references based on U.S. IDS citations; prepare client and foreign associate reporting/correspondence letters in connection with prior art disclosure practice management. Interface directly with client internal IP administrators/paralegals/docketing with respect to all aspects of patent prosecution; act as client’s “go-to” person for all patent prosecution administrative matters (patent office communications and application status, questions on bibliographic data and formal documents for patent assets, billing questions, etc.), when assigned; maintain internal and client bibliographic databases in connection with patent assets and manage client correspondence/reporting regarding all aspects of U.S. and/or foreign patent prosecution; conduct chain of title research; prepare and maintain chain of title charts. Prepare and file formal documents (e.g., transmittals, inventor declarations, assignment documents, powers of attorney, signatory certifications), and file patent applications and other prosecution-related documents via USPTO’s Electronic Filing System (EFS-Web); regularly monitor USPTO Patent Application Information Retrieval (PAIR) system to verify status of client patent assets and, upon request, competitor patent assets; conduct independent docket review and workflow scheduling and management with respect to USPTO deadlines; direct interface with draftsperson regarding preparation of formal patent drawings and managing communications in connection with same, as needed; review Notices of Allowance to ensure compliance with all formal patent requirements, attend to verification of Patent Term Adjustment (PTA), and payment of Issue Fees. Assist with diligence projects and chain of title research / assignment issues; perform U.S. and foreign name change projects; prepare patent searches using various firm-subscribed databases and public data; maintain continuing patent searches and patent clearance studies; conduct worldwide patent searches, create and update patent family trees in Visio, and maintain patent portfolio status charts; conduct Patent Term Adjustment (PTA) reviews, prepare Letters of Candor and/or Requests for Reconsideration, as required; conduct audit response polls in connection with periodic requests from clients’ auditors; perform tasks in connection with patent opinions (e.g., conduct timekeeper opinion poll, prepare chain of title chart, patent schedule, Officer’s Certificate, and back-up checklist); provide assistance with re-exams to include organization and maintenance of eRooms, organize prior art for information disclosure statements.
Qualification and Experience
The candidate should have 5+ years prior experience managing a patent prosecution docket, including managing complex U.S. IDS practices and non-U.S. prior art disclosures; proficient knowledge of document management software and time entry program; flexibility to work overtime including evening hours and weekends as required and ability to travel to other offices on an infrequent basis. Should also have knowledge of the rules according to 37 C.F.R. and PCT rules and regulations.
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