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Nixon Peabody LLP · 2 weeks ago

Senior Patent Prosecution Specialist

Chicago, IL

Full-time

Hybrid

Mid, Senior Level

$78K/yr - $132K/yr

5+ years exp

Nixon Peabody LLP is a law firm that offers a dynamic and energizing environment for its employees. The Senior Patent Prosecution Specialist is responsible for overseeing patent prosecution and providing support to attorneys and clients, ensuring that all deadlines are met and managing various administrative tasks related to patent filings.

Law EnforcementReal Estate

Comp. & Benefits

H1B Sponsor Likely

Responsibilities

Review and manage daily dockets of assigned attorneys and professional specialists

Coordinate with timekeepers to ensure all deadlines are met on a daily basis

Perform electronic filings with the United Stated Patent and Trademark Office (USPTO)

Oversee and manage new business intakes. This includes submitting new client, matter and pro bono intakes requests, complete billing information and track status

Responsible for US patent filing and prosecution:

Review USPTO applications (i.e. provisional, non-provisional and continuing applications.)

Review follow-on submissions, such as preliminary amendments, responses, requests for continued examination, missing parts and issue fee payments

Review formality and other relevant USPTO documents (i.e. assignments, declarations and powers of attorney)

Review client correspondence in accordance with firm/client guidelines

Review Information Disclosure Statements

Delegate tasks and duties to Patent Support Assistant and Patent Support Specialists

Conduct final patent prosecution review

Manage and disperse incoming USPTO mail and other related correspondence

Oversee phone, email and calendars for assigned timekeepers, ensuring all details are anticipated, arranged and well-coordinated

Maintain knowledge of the status of ongoing client matters and keep up-to-date contact lists, anticipate next steps and prepare for them in advance

Manage special projects and prepare reports and summaries for attorneys and clients (i.e. creating spreadsheets, status reports and charts related to client specific patent portfolio management)

Report correspondence accurately and timely, and in accordance with firm/client guidelines. Respond to client inquiries and requests for information and provide status reports as needed

Maintain accurate electronic files in accordance with firm/practice group guidelines and procedures

Assist with processing any incoming/outgoing file transfers

Promptly perform administrative tasks (i.e. expense reimbursement, business development, etc.) in InterAction, Chrome River and other firm applications

Assist with monthly billing and provide documentation and edits

Provide training and support to members of the team

Perform other duties as assigned

Qualification

Patent prosecution experienceUSPTO Electronic Filing SystemMicrosoft Office SuiteAttention to detailInterpersonal skillsCommunication skills

Required

5-8 years of patent prosecution experience, preferably within a law firm or professional services environment

Bachelor's Degree or equivalent work experience required

Demonstrated understanding of the USPTO's Electronic Filing System (EFS) and patent rules and regulations

Advanced knowledge and ability to effectively navigate through the USPTO's website (i.e. PAIR)

Proficiency with windows-based software applications, including Microsoft Office Suite and the firms document management system (i.e. NetDocuments)

Exceptional interpersonal and communication skills, both verbal and written

Strong attention to detail with the ability to navigate multiple tasks and deadlines

Benefits

In addition to a standard benefits package, this role may be eligible for additional contingent compensation based on an array of factors, including but not limited to: work performance, geographic location, work experience, education, and qualifications.

Company

Nixon Peabody LLP

Nixon Peabody LLP is an American Lawyer top-100 law firm in the United States and has 15 offices worldwide.

Founded in 1999

Boston, Massachusetts, USA

1001-5000 employees

http://www.nixonpeabody.com/

H1B Sponsorship

Nixon Peabody LLP has a track record of offering H1B sponsorships. Please note that this does not guarantee sponsorship for this specific role. Below presents additional info for your reference. (Data Powered by US Department of Labor)

Distribution of Different Job Fields Receiving Sponsorship

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Trends of Total Sponsorships

2024 (1)

2022 (1)

2021 (1)

2020 (2)