IP Specialist jobs in United States
cer-icon
Apply on Employer Site
company-logo

DLA Piper · 11 hours ago

IP Specialist

DLA Piper is a collaborative and supportive law firm, seeking an IP Specialist to provide administrative and patent prosecution support to their prosecution practice group. The role involves preparing and finalizing patent application documents, managing deadlines, and supporting attorneys with various administrative tasks.

AdviceLaw EnforcementLegalProfessional Services
badNo H1Bnote

Responsibilities

Prepares and finalizes all documents needed to complete the filing of provisional, non-provisional and PCT applications
Prepares formal documents (assignment, declaration, power of attorney), obtains appropriate signatures, and follows-up as needed
Records assignments with US Patent Office. Files declaration and power of attorney documents
Assists in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates
Prepares and files responses to corrected applications papers, request for corrected filing receipts, updates to applicants and inventors (application data sheet)
Prepares and files response to restriction requirements along with preliminary amendments
Prepares office action response shells and letters to clients reporting office actions along with pending claim set
Prepares and files response to office actions along with extensions of time, terminal disclaimers, declarations, exhibits, etc
Reviews and manages docket for U.S. and foreign deadlines, understands docket and deadlines and action needed on each file
Reviews files and prepares information disclosure statement and accompanying documents
Contacts outside vendors to follow-up on drawings, translations, certified copies, etc., for filing with the Patent and Trademark Office
Retrieves information from USPTO website and other internet research
Overall support for all aspects of portfolio management
Stays current and compliant with MPEP and CFR rules and administrative changes at the USPTO
Perform conflict checks and open new matter numbers for clients
Prepare new client engagement letters
Prepares conflict waiver letters
Assists attorneys with time entries (Webview), expense reports, and invoice approvals
Assists attorneys with other administrative tasks or special projects as needed
Other duties as assigned

Qualification

USPTO filing experienceUSPTO rulesPatent prosecution experienceMicrosoft WordMicrosoft ExcelMicrosoft OutlookPatent docketing softwareCommunication skillsOrganizational skillsTeam playerSelf-starter

Required

Experience filing with the USPTO
Knowledge of USPTO rules and practices, including docketing, public/private PAIR, US prosecution and formality requirements
Self-starter with excellent communication, writing, and organizational skills
Proven administrative abilities and excellent judgment
Ability to handle multiple time-sensitive tasks in a fast-paced environment
Punctuality
Ability to work independently and as a team player
Strong computer skills, including Microsoft Word, Excel, and Outlook
High School or GED
3 years' office/administrative experience in a professional services and/or legal industry

Preferred

Patent prosecution experience
Knowledge of law firm billing programs (Webview)
Knowledge of patent docketing software (OP Solutions Pattsy)

Benefits

Medical/dental/vision insurance
401(k)

Company

DLA Piper

company-logo
DLA Piper is a global law firm with lawyers located in more than 40 countries to helps clients with their legal needs around the world.

Funding

Current Stage
Late Stage

Leadership Team

leader-logo
Robert Bratt
Chief Operating Officer and Executive Director, US Operations
linkedin
leader-logo
Andrew Dyson
UK Managing Partner
linkedin
Company data provided by crunchbase