Patent Prosecution Specialist

Wilson Sonsini is the premier legal advisor to technology, life sciences, and other growth enterprises worldwide. We represent companies at every stage of development, from entrepreneurial start-ups to multibillion-dollar global corporations, as well as the venture firms, private equity firms, and investment banks that finance and advise them. The firm has approximately 1,100 attorneys in 17 offices: 13 in the U.S., two in China, and two in Europe. Our broad spectrum of practices and entrepreneurial spirit allow exceptional opportunities for professional achievement and career growth.

The firm is actively looking for a Patent Prosecution Specialist to join the Patents and Innovations team. This position is responsible for assigned tasks and works under the direction and guidance of attorneys, patent agents, IP specialists, and the department leadership team.

In this role, the Patent Prosecution Specialist manages client portfolios on behalf of the assigned clients, including filings, correspondence, and docket management. It is the job of the Patent Prosecution Specialist to prepare, revise, and file all documents related to US patent prosecution. It includes new patent applications, missing parts, corrected application papers, office action responses and other formal documents, as well as to timely report all official correspondence regarding the same. In addition, the Patent Prosecution Specialist must perform any other general office administrative functions as necessary.

This position is available for either a hybrid work schedule or fully virtual.

Responsibilities:

• Handle complex filings for attorneys and staff and provides reliable suggestions and feedback
• Strong familiarity with CFR, MPEP and other patent-related laws and regulations, and engage in research when required
• Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters
• Communicate with clients, examiners, and other parties regarding status of applications and/or other related matters
• Maintain close communication with US and foreign paralegals to ensure deadlines are met
• Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; provide timely reminders of upcoming dates
• Prepare, e-file, and report filing of various legal documents maintaining structural and formatting requirements outlined the MPEP, including applications, (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, etc.
• Prepare, e-file and report handling of all associated formalities after filing new applications to include, but not limited to prepare formal documents such as Declarations, Powers of Attorney, Substitute Statements, and Assignments as required by each jurisdiction. Obtain required signatures and follow up with clients as needed
• Report and handle all substantive USPTO actions with input from the Responsible Attorney, prepare draft amendments/responses to official actions, including Responses to Missing Parts, Report Notices of Allowance, address any inventorship/assignment issues, and prepare related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)
• Review and proofread documents from the USPTO (including Official Filing Receipts, Notices of Publication, Notices of Recordation, and Issue Notifications) and report those documents directly to the client. If required, prepares a request for correction, when applicable
• Prepare and forward reminders to clients regarding due dates and instructions
• Prepare correspondence regarding foreign filing/U.S. conversion deadlines
• Prepare correspondence regarding receipt of Letters Patent and Certificates of Correction and mail or ship document(s) to client
• Communicate with Harbor for preparation of sequence listings
• Order certified copies of Priority Documents
• Prepare simple formal drawings for applications
• Communicate with vendor for preparation of formal drawings; review drawings for accuracy and completeness prior to submission to the USPTO
• Provide client support for portfolio management, including accommodating client-specific reporting guidelines, and responding to client phone calls and/or emails relating to specific requests or reports
• Pull docket for assigned clients, maintain detailed annotations and review deadlines daily; maintain complete ownership of docket
• Monitor and follow-up on dates associated with the US and foreign docket, including clearing dates and providing follow-up with attorneys, clients, and management to provide adequate time to respond
• Clear daily docket reports in collaboration with the IP docket department and in accordance with established firm guidelines
• Perform research and compile data as requested by internal team members and clients
• Retrieve, review, and analyze information from various sources in a timely manner
• Assist legal staff with new business intake, including opening new patent prosecution matters and sub-matters
• Prepare Powers of Attorney (POA) for transferred cases
• Work with finance to obtain advance retainers
• Upload U.S. patent invoices as needed to account payable database
• Maintain electronic and physical files; update keep on top memos
• Retrieve, review, and analyze information from USPTO’s Patent Application Information Retrieval (PAIR) system
• Review and understand rules in Code of Federal Regulations (CFR) and Manual of Patent Examining Procedure (MPEP)
• Knowledge of Patent Center, Electronic Filing System (EFS), and Electronic Patent Assignment System (EPAS)
• Contact the Applications Assistance Unit, Electronic Business Center or Assignment branches of the USPTO, as needed
• Manage docket relating to US patent prosecution deadlines to ensure timely completion of required actions, including timely reminders and follow up with attorneys/staff to ensure docket actions and deadlines are met. Responsible for meeting all assigned due dates
• Maintain a secondary docket of due dates for each assigned per established departmental guidelines. Independently calculate deadline related to assigned matter and maintain independent calendar of said deadlines
• Review and monitor incoming US filing mail and ensure that critical items receive appropriate response and that deadlines are entered in secondary docket
• Review and clear docket reports provided by the IP Docketing Department in accordance with established firm guidelines
• Sustain working knowledge of changes in US patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
• Enter daily fixed fees into database
• Perform other related duties as assigned

Requirements:

• Bachelor’s degree and/or paralegal certificate is preferred
• Minimum 5 years of prior experience in a U.S. Patent Prosecution or Legal Assistant role, with intermediate knowledge of all stages of patent prosecution and USPTO requirements, including rules, deadlines, and procedures
• Proficiency with U.S. and foreign patent office websites and the ability to research and locate data
• Knowledge regarding a calendaring system is required and knowledge of Computer Packages Inc.’s (CPI) calendaring system is a plus
• Strong knowledge of Microsoft products, database management systems, and electronic files
• Strong desire to learn new tasks and technologies
• Knowledge regarding aspects of patent prosecution and the United States Patent and Trademark Office’s Patent Application Information Retrieval (PAIR) System, World Intellectual Property Organization (WIPO), European Patent Office (EPO), Orbit, foreign PTO sites, Electronic Filing System (EFS), and Patent Center databases
• Ability to work well under pressure and demonstrated ability to coordinate multiple competing tasks simultaneously and demands and adapt to various practice management styles
• Excellent analytical skills, with a strong ability to review and organize legal documents in complex legal matters
• Ability to demonstrate accuracy, attention to detail and strong organizational skills, and strong written and verbal communication skills
• Ability to review and proofread documents for grammar, spelling, proper language, and readability
• Ability to prioritize workflow independently and has exceptional time management skills and work ethic
• Demonstrate tact, diplomacy and discretion while handling information and responding to questions from staff, clients, attorneys, managers, and others
• Ability to follow firm policies and procedures while working remotely and in person
• Team player and willingness to provide back-up support to team members as required
• Ability to work overtime, as required

The primary location for this job posting is in Palo Alto, but other locations may be listed. The actual base pay offered will depend upon a variety of factors, including but not limited to the selected candidate’s qualifications, years of relevant experience, level of education, professional certifications and licenses, and work location. The anticipated pay range for this position is as follows:

Palo Alto, New York, San Francisco: $39.23 – $53.08 per hour.
Austin, Boston, Boulder, Century City, Delaware, Los Angeles, Salt Lake City, San Diego, Seattle, Washington, D.C., and all other locations: $35.14 – $47.55 per hour.

The compensation for this position may include overtime and a discretionary year-end merit bonus based on performance. We offer a highly competitive salary and benefits package.

Equal Opportunity Employer (EOE).