Talent.com
IP US Filing Specialist
IP US Filing SpecialistCooley LLP • Seattle, WA, United States
IP US Filing Specialist

IP US Filing Specialist

Cooley LLP • Seattle, WA, 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 • Seattle, WA, United States

    Related jobs
    Provider Relations Representative - USFHP

    Provider Relations Representative - USFHP

    Providence • Renton, WA, United States
    Full-time
    Under the supervision of the USFHP leadership team, the Provider Relations Representative functions as a liaison among the contracted physician / specialist under the USFHP Health Plan.This position ...Show more
    Last updated: 30+ days ago • Promoted
    Corporate Architecture IP & Technology Analyst

    Corporate Architecture IP & Technology Analyst

    Oracle • Seattle, WA, United States
    Full-time
    Department Description : Oracle Corporate Architecture.The core mission of Oracle's Corporate Architecture group is to set and enforce direction in product architecture and related standards for a w...Show more
    Last updated: 5 days ago • Promoted
    Client Service Specialist I

    Client Service Specialist I

    CI Financial Corp. • Seattle, WA, US
    Full-time
    At Corient, we help high- and ultra-high-net-worth individuals and families to enjoy a full life, while enabling them to preserve their wealth for future generations, and provide for the people, ca...Show more
    Last updated: 30+ days ago
    Specialist, IT Infrastructure

    Specialist, IT Infrastructure

    Celestica • Seattle, WA, United States
    Full-time
    The Specialist, IT Infrastructure - Network Support will install, maintain, upgrade, and continuously improve the site's operating environment, ensuring the ongoing reliability, performance and sec...Show more
    Last updated: 12 days ago • Promoted
    Systems & Network Ops Specialist

    Systems & Network Ops Specialist

    Blueprint Consulting Services • Bellevue, WA, United States
    Full-time
    We are a technology solutions firm headquartered in Bellevue, Washington, with a strong presence across the United States. Unified by a shared passion for solving complicated problems, our people ar...Show more
    Last updated: 5 days ago • Promoted
    Configuration Management Specialist (Senior or Lead)

    Configuration Management Specialist (Senior or Lead)

    The Boeing Company • Everett, WA, United States
    Permanent +1
    At Boeing, we innovate and collaborate to make the world a better place.We're committed to fostering an environment for every teammate that's welcoming, respectful and inclusive, with great opportu...Show more
    Last updated: 8 days ago • Promoted
    Billing Specialist II

    Billing Specialist II

    SeaMar Community Health Centers • Federal Way, WA, United States
    Full-time
    Sea Mar Community Health Centers, a Federally Qualified Health Center (FQHC) founded in 1978, is a community-based organization committed to providing quality, comprehensive health, human, housing,...Show more
    Last updated: 14 days ago • Promoted
    SAP Procure to Pay Functional Specialist (m / w / d)

    SAP Procure to Pay Functional Specialist (m / w / d)

    Amazon Kuiper Manufacturing Enterprises LLC • Bellevue, WA, United States
    Permanent
    Amazon Leo is Amazon's low Earth orbit satellite broadband network.Its mission is to deliver fast, reliable internet to customers and communities around the world, and we've designed the system wit...Show more
    Last updated: 4 days ago • Promoted
    Medicare Compliance Analyst

    Medicare Compliance Analyst

    Washington Staffing • Everett, WA, US
    Full-time
    Molina Healthcare's Medicare Compliance team supports Medicare operations for the Molina Medicare product lines.It is a centralized corporate function supporting compliance activities.The Complianc...Show more
    Last updated: 9 hours ago • Promoted • New!
    Senior Analyst, Network Strategy, Pricing & Analytics - REMOTE

    Senior Analyst, Network Strategy, Pricing & Analytics - REMOTE

    Molina Healthcare • Everett, WA, United States
    Remote
    Full-time
    Analyst, Network Strategy, Pricing & Analytics guides the investment of our network partners through contract valuation and analysis to ensure access to quality healthcare services for people recei...Show more
    Last updated: 27 days ago • Promoted
    Advisory Board, Fiber Infrastructure

    Advisory Board, Fiber Infrastructure

    Confidential • Seattle, WA, United States
    Full-time
    Advisory Board, Fiber Infrastructure.Prominent provider of energy management & automation solutions.The Company is seeking an Advisory Board member with expertise in Fiber Infrastructure.The succes...Show more
    Last updated: 19 days ago • Promoted
    Data Center Technician

    Data Center Technician

    Archetype Permanent Solutions • Everett, WA, United States
    Full-time
    Job Description : Data Center Technician.Pay : $22-$30 per hour based on experience.The Archetype Strategy is seeking a detail-oriented and skilled. In this role, you will be responsible for the criti...Show more
    Last updated: 19 days ago • Promoted
    Hybrid Litigation Associate — IP & Complex Disputes

    Hybrid Litigation Associate — IP & Complex Disputes

    Kaizen Stackup • Seattle, WA, United States
    Full-time
    A forward-thinking law firm in Seattle is seeking a mid-level litigation associate with 3–5 years of experience.Ideal candidates will have a JD from a top-tier law school and experience in intellec...Show more
    Last updated: 4 days ago • Promoted
    Billing Specialist - Intellectual Property

    Billing Specialist - Intellectual Property

    Morgan Lewis • Seattle, WA, United States
    Full-time
    Morgan, Lewis & Bockius LLP, one of the world's leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is ...Show more
    Last updated: 19 days ago • Promoted
    Revenue Specialist III

    Revenue Specialist III

    DaVita • Federal Way, WA, United States
    Full-time
    S 323rd St, Federal Way, Washington, 98001-5023, United States of America.DaVita is currently looking for a Revenue Specialist for our billing systems setup team in the Revenue Operations Departmen...Show more
    Last updated: 19 days ago • Promoted
    CMDB Integration Specialist - Telecommunications

    CMDB Integration Specialist - Telecommunications

    The Brixton Group, Inc. • Seattle, WA, United States
    Full-time
    REMOTE (PST time zone preferred).Alaska / Some overlap with Offshore team.Client is seeking an expert to lead and oversee the CMDB implementation. The role requires strong technical understanding of...Show more
    Last updated: 6 days ago • Promoted
    Senior Patent Counsel, Enterprise IP & Tech Transactions

    Senior Patent Counsel, Enterprise IP & Tech Transactions

    Amazon Jobs • Seattle, WA, United States
    Full-time
    A leading e-commerce company in Seattle is seeking a skilled patent attorney to support its innovative technology initiatives. The role involves interacting with inventors and business clients to ma...Show more
    Last updated: 4 days ago • Promoted
    Billing Solutions Architect

    Billing Solutions Architect

    Stripe • Seattle, WA, United States
    Full-time
    Stripe is a financial infrastructure platform for businesses.Millions of companies—from the world’s largest enterprises to the most ambitious startups—use Stripe to accept payments, grow their reve...Show more
    Last updated: 12 days ago • Promoted