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Cooley LLP · 1 month ago

IP US Filing Specialist

New York, United States

Full-time

Hybrid

Mid Level

$42/hr - $61/hr

3+ years exp

Cooley LLP is seeking an IP US Filing Specialist to join their IP Services team. The role involves providing full support to patent attorneys and clients in filing and maintaining US applications and patents, including coordinating with IP professionals, preparing documents for filing, and managing client communications.

Document PreparationLegalProfessional Services

Comp. & Benefits

H1B Sponsor Likely

Responsibilities

Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters

Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; forward all USPTO mail to Client Team and provide timely reminders of upcoming dates

Prepare and review required documents for filing; upload of same with the USPTO all US patent prosecution filings, including applications, (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, issue fee payments, etc

Prepare, file and report of US formalities (e.g., POAs, assignments, declarations, drawings), and non-substantive USPTO documents, such as filing receipts, publications, along with preparation of reminder letters to clients of upcoming deadlines

Handle and report all substantive USPTO actions with input from Responsible Attorney, including preparing draft amendments/responses to official actions and notices to file missing parts, obtaining identified references, processing notices of allowance including attending to the Notice of Allowance Review Form in coordination with the Patent Prosecution Specialist and Patent Practitioner, addressing any inventorship/assignment issues, and preparing related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)

Proof and forward Letters Patent to the client

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

Sustain working knowledge of US patent prosecution rules and recommend procedural modifications to accommodate changes as needed

Maintain a secondary docket of due dates for each assigned client as outlined in the Patent Prosecution Policies and Procedures Manual

Review docket reports and provide detailed annotations related to upcoming dates daily

Complete administrative tasks including maintenance of client data rooms, responding to deadlines and changes to dockets, along with other communication with the central Docketing Department, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable

Communicate regularly with the assigned Patent Prosecution Specialist (PPS) regarding the timing of filing IDSs, as well as reporting any IDS filed to the client

Qualification

IP experienceUSPTO procedures knowledgeMicrosoft Office proficiencyPTO databases researchCustomer service orientationAttention to detailCommunication skillsWork independently

Required

After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications

Available to work overtime, as required

3+ years relevant IP experience

Preferred

Bachelor's Degree

Previous law firm experience

Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions

Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

Benefits

Medical

Health savings account (with applicable medical plan)

Dental

Vision

Health and/or dependent care flexible spending accounts

Pre-tax commuter benefits

Life insurance

AD&D

Long-term care coverage

Backup care for children and/or adults

Other parental support benefits

Firm-paid life insurance

AD&D

LTD

Short term medical benefits

20 days of Paid Time Off (“PTO”)

10 paid holidays each year

Generous parental leave

Fertility benefits

Company

Cooley LLP

Glassdoor4.0

Clients partner with Cooley on transformative deals, complex IP and regulatory matters, and high-stakes litigation.

Founded in 1920

Palo Alto, California, USA

1001-5000 employees

http://www.cooley.com

H1B Sponsorship

Cooley 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

Represents job field similar to this job

Trends of Total Sponsorships

2025 (28)

2024 (10)

2023 (15)

2022 (18)

2021 (22)

2020 (14)