Talent.com
IP US Filing Specialist
IP US Filing SpecialistCooley LLP • San Diego, CA, United States
IP US Filing Specialist

IP US Filing Specialist

Cooley LLP • San Diego, CA, United States
30+ days ago
Job type
  • Full-time
Job description

IP US Filing Specialist

Cooley is seeking an IP US Filing Specialist to join the IP Services team.

Position Summary : The IP US Filing Specialist (USFS) provides full support to patent attorneys, agents, and clients in filing and maintaining US applications and patents. Specific duties include, but are not limited to, the following

Position 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
  • Skills & Experience :

    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)
  • Competencies :

  • Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs
  • Ability to work independently and under pressure / tight time constraints
  • Creative and entrepreneurial approach to problem-solving and process improvement
  • Flexible and agile, ability to reprioritize with changes in the business
  • Strong initiative and a get-it-done attitude
  • Excellent communication and interpersonal skills
  • Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.

    EOE.

    The expected hourly pay range for this position with a work schedule of 40 hours per week is $42.00 - $61.00 ($87,360.00 - $126,880.00 annually). Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate.

    We offer a full range of elective benefits including 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 and other parental support benefits. In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off ("PTO") and 10 paid holidays each year. We provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.

    Create a job alert for this search

    Ip Specialist • San Diego, CA, United States

    Related jobs
    Validation Engineer - 1

    Validation Engineer - 1

    Tijuana, Baja California • La Joya, Baja California, Mexico
    Vantive is a vital organ therapy company on a mission to extend lives and expand possibilities for patients and care teams everywhere. For 70 years, our team has driven meaningful innovations in kid...Show more
    Last updated: 21 days ago • Promoted
    Senior Trade Compliance Specialist

    Senior Trade Compliance Specialist

    Pens.com • Tijuana, Baja California, Mexico
    The Senior Trade Compliance Specialist will play a critical role in ensuring compliance with global trade regulations and supporting daily import / export activities for our operations in Mexico and ...Show more
    Last updated: 30+ days ago • Promoted
    Client Account Specialist (Law Firm Billing Exp. Required)

    Client Account Specialist (Law Firm Billing Exp. Required)

    Fawkes IDM • San Diego, CA, US
    Full-time
    Quick Apply
    Establishing, fostering, and maintaining professional and collaborative relationships with attorneys, staff, and clients to ensure compliance with both attorney and client specifications, managing ...Show more
    Last updated: 30+ days ago
    Senior Trade Compliance Specialist

    Senior Trade Compliance Specialist

    NATIONAL PEN / PLUMA NACIONAL • Tijuana, Baja California, Mexico
    The Senior Trade Compliance Specialist will play a critical role in ensuring compliance with global trade regulations and supporting daily import / export activities for our operations in Mexico and ...Show more
    Last updated: 30+ days ago • Promoted
    IT Specialist

    IT Specialist

    Global TekMed Holdings, LLC • Chula Vista, CA, United States
    Full-time
    Global TekMed Holdings is dedicated to simplifying the intricate processes faced by Veterans through innovative technology and exceptional service. We take pride in honoring all Veterans by providin...Show more
    Last updated: 30+ days ago • Promoted
    Client Service Specialist

    Client Service Specialist

    Ameriprise Financial • San Diego, CA, US
    Full-time
    At Ameriprise Financial, we take pride in providing our clients with a personalized experience every step of the way! If you prosper in an environment where you can help others and enjoy crafting a...Show more
    Last updated: 30+ days ago • Promoted
    Technical Specialist

    Technical Specialist

    Apple • Escondido, CA, United States
    Full-time
    Apple Retail is where the best of Apple comes together.We bring our expertise to help people do what they love, delivering an only-at-Apple experience. At Apple, we believe inclusion is a shared res...Show more
    Last updated: 30+ days ago • Promoted
    Complaint Compliance Specialist (Specialist 3)

    Complaint Compliance Specialist (Specialist 3)

    BD • San Diego, CA, US
    Full-time
    Complaint Compliance Specialist (Specialist 3).Be part of something bigger! BD is one of the largest global medical technology companies in the world and is advancing the world of health by improvi...Show more
    Last updated: 18 days ago • Promoted
    AP Specialist

    AP Specialist

    Ledgent • El Cajon, CA, United States
    Full-time
    R : Strong AP Experience (full-cycle AP, HIGH VOLUME, including PO's, 2 / 3-way match).R / + : ViewPoint / Vista (HIGHLY PREFERRED). Prefer Assoc or Bachelor's degree.All qualified applicants will receive...Show more
    Last updated: 18 days ago • Promoted
    Bilingual Loan Specialist

    Bilingual Loan Specialist

    Regional Finance Corp • Escondido, CA, United States
    Full-time
    Take your career to the next level! In the last few years our goal has been expansion, creating growth opportunities for many of our team members. Not only are we serious about growth, but we are al...Show more
    Last updated: 4 days ago • Promoted
    IT Specialist II

    IT Specialist II

    Innoflight Inc • San Diego, CA, United States
    Full-time
    GROW WITH US AND STAY EXTRAORDINARY : .Launch your career to new heights with Innoflight—one of San Diego’s fastest-growing Aerospace and Defense innovators. Here, visionary minds engineer the future ...Show more
    Last updated: 18 days ago • Promoted
    AWS / Security Networking Engineer (Senior / Lead) ID42040

    AWS / Security Networking Engineer (Senior / Lead) ID42040

    AgileEngine • Rosarito, Baja California, Mexico
    AWS / Security Networking Engineer (Senior / Lead) ID42040.AWS / Security Networking Engineer (Senior / Lead) ID42040.Join us and receive a $2,500 signing bonus!. Fortune 500 brands and trailblazing startup...Show more
    Last updated: 21 days ago • Promoted
    Regulatory & Customs Compliance Specialist

    Regulatory & Customs Compliance Specialist

    Sercomm • Rosarito, Mexico
    We are looking for a highly independent and problem-solving-oriented specialist to support our manufacturing operations in Tijuana. The ideal candidate must be able to manage outsourced manufacturer...Show more
    Last updated: 22 days ago • Promoted
    IT Specialist II

    IT Specialist II

    Innoflight LLC • San Diego, CA, US
    Full-time
    Quick Apply
    GROW WITH US AND STAY EXTRAORDINARY : .Launch your career to new heights with Innoflight—one of San Diego’s fastest-growing Aerospace and Defense innovators.Here, visionary minds eng...Show more
    Last updated: 29 days ago
    AVP / VP, Portfolio Manager

    AVP / VP, Portfolio Manager

    Banc of California • Escondido, CA, United States
    Full-time
    Be among the first 25 applicants.NYSE : BANC) is a bank holding company headquartered in Los Angeles with one wholly-owned banking subsidiary, Banc of California. The bank serves small, middle-market...Show more
    Last updated: 12 days ago • Promoted
    Billing Coordinator

    Billing Coordinator

    Retina Consultants San Diego • Poway, CA, United States
    Full-time
    The Billing Specialist will play a vital role in the financial operations of our ophthalmology practice, ensuring that claims are processed efficiently and patient billing inquiries are handled wit...Show more
    Last updated: 11 days ago • Promoted
    VP, Provider Network Leadership - Southern CA & Medi-Cal

    VP, Provider Network Leadership - Southern CA & Medi-Cal

    Blue Shield of CA • San Diego, CA, United States
    Full-time
    A leading health insurance organization based in California is seeking a VP, Provider Network Management to lead provider contracting efforts. This role requires a minimum of 12 years in network man...Show more
    Last updated: 8 hours ago • Promoted • New!
    PayPal Dispute Resolution Specialist

    PayPal Dispute Resolution Specialist

    TradeJobsWorkforce • 92196 San Diego, CA, US
    Full-time
    We have an opening for a talented PayPal Dispute Resolution Specialist to perform daily responsibilities with dedication. Stay adaptable in a dynamic, fast-paced environment.Provide excellent intera...Show more
    Last updated: 30+ days ago • Promoted