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Company

Wilson Sonsini Goodrich & Rosati · 13 hours ago

Patent Transfer Specialist

United States

Full-time

Remote

Mid, Senior Level

$39.23/hr - $53.08/hr

5+ years exp

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Responsibilities

Process incoming and outgoing client transfers.

Review and organize paper and electronic files and identify and reconcile outstanding items.

Review of application case statuses in USPTO Patent Center , WIPO, EPO, Orbit, foreign PTO sites, and review of electronic documents and physical files to build family case lists.

Communicate with internal departments as well as clients, new counsel, and foreign counsel in order to facilitate the intake of IP portfolios.

Communicate with working teams, clients, and new clients regarding outgoing matters.

Audit files to be transferred out of the firm, including portfolio review, pending deadlines and communication with new counsel. Compare and reconcile system reports. Confirm transfer of documents with the working team.

Send physical files to the Copy Center for scanning, save scans per department procedure, if applicable. Purge physical and electronic files being transferred out of the firm and coordinate transfer with the Records team.

Follow-up with new counsel or client for acknowledgement of receipt of transfer and forward transfer correspondence for transfer-out files.

Prepare and file withdrawal of power of attorney documents or change of correspondence documents, for transfer-out files, if needed.

Terminate relationships with clients who pay maintenance fees only and handle closures/termination for inactive clients.

Work on other projects as necessary.

Qualification

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Patent prosecutionU.S. PatentTrademark OfficeCPI calendaring systemMicrosoft OfficeDocument proofreadingWorkflow prioritization

Required

Minimum of 5+ years of prior experience in a U.S. and foreign patent prosecution, with high-level knowledge of rules, deadlines, and procedures.

Knowledge of Computer Packages Inc.'s (CPI) or similar calendaring system is required.

Proficiency with U.S. and foreign patent websites and the ability to research and locate data.

Demonstrate accuracy, attention to detail and strong organizational skills, and strong written and verbal communication skills.

Excellent analytical skills, with a strong ability to review and organize legal documents in complex legal matters.

Ability to review and proofread documents for grammar, spelling, proper language, and readability.

Ability to prioritize workflow independently and efficiently.

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.

Self-starter who is detail-oriented, efficient, flexible, and results-oriented.

Advanced computer skills including proficiency in Microsoft Office, Outlook, and Excel.

Able to keep abreast of practice area processes as appropriate to the position.

Team player and willingness to provide back-up support to team members as required.

Ability to work overtime, as required.