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DLA Piper · 9 hours ago

IP Specialist

Palo Alto, CA

Full-time

Hybrid

Mid Level

$40.40/hr - $64.23/hr

3+ years exp

DLA Piper is a collaborative and supportive firm that values its people. The IP Specialist will provide administrative and patent prosecution support to the firm's prosecution practice group, ensuring compliance with USPTO rules and managing patent application processes.

AdviceLaw EnforcementLegalProfessional Services

No H1B

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 experiencePatent prosecution knowledgeDocket managementMicrosoft WordMicrosoft ExcelMicrosoft OutlookWebview billing softwarePatent docketing softwareCommunication skillsOrganizational skillsTeam playerSelf-starter

Required

Must have experience filing with the USPTO as well as knowledge of USPTO rules and practices, including docketing, public/private PAIR, US prosecution and formality requirements

Must be a self-starter and have excellent communication, writing and organizational skills including keeping the attorneys and patent agents on track through overseeing the docket and taking a proactive approach

Individuals should have proven administrative abilities, excellent judgment, and the ability to handle multiple time-sensitive tasks in a fast-paced environment

Punctuality is a must

Candidates must be able to work independently, as well as be a team player

Strong computer skills are required, including Microsoft Word, Excel, and Outlook

High School or GED

3 years' office/administrative experience in a professional services and/or legal industry

Effectively communicate, verbally and in writing, with clients, lawyers, business professionals, and third parties

Produce deliverables, answer phone calls, and reply to correspondence in an efficient and responsive manner

Provide timely, accurate, and quality work product

Successfully meet deadlines, expectations, and perform work duties as required

Foster positive work relationships

Comply with all firm policies and practices

Engage in both physical and sedentary activity, such as (a) working at a computer for extended periods of time, including on-screen reading and typing; (b) participating in digital/virtual conference calls; (c) participating in meetings as needed

Ability to work under pressure and manage competing demands in a fast-paced environment

Perform all other duties, tasks or projects as assigned