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IP Patent Prosecution Specialist (Quality Control)

Company: Cooley LLP
Location: Reston
Posted on: November 17, 2022

Job Description:

IP Patent Prosecution Specialist (Quality Control)Cooley is seeking a IP Patent Prosecution Specialist (Quality Control) to join the IP Practice Services team.

Position Summary: The IP Patent Prosecution Specialist (Quality Control) is responsible for carrying out quality control (QC) functions associated with IDS filings. The Specialist also carries out the full duties and responsibilities of a Patent Prosecution Specialist in providing specialized support for Information Disclosure Statement (IDS) and Section 18 work, prosecution and diligence support, and other billable patent projects. Specific duties and responsibilities include, but are not limited to, the following:

Position Responsibilities:
Quality Control responsibilities:

  • Coordinate with IP professionals and patent practitioners to review IDS filings and ensure accuracy and completeness
  • Complete quality control checklists to ensure compliance with the firm's risk management directives and best practices, as well as USPTO and international rules and regulations
  • Triage incoming IDS filings to be reviewed, prioritizing as necessary and communicating expected turnaround time to the IP professionals and practitioners
  • Provide late filing assistance and extended coverage for other PPS team members
  • Information Disclosure Statement (IDS) and prosecution support:
  • Oversee IDS management for assigned client patent portfolios
  • Review daily and weekly custom PPS docket reports and update notes in Inprotech events
  • Create and maintain complex client IDS spreadsheets in Excel and corresponding records in IDS support software (MaxIDS)
  • Prepare IDS forms and collect and clean electronic copies of prior art references
  • Monitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art references
  • Perform pre-examination, examination, and post-allowance IDS reviews
  • Assist with re-examination petitions to include organization of prior art for IDS's
  • Provide foreign associates with prior art lists to fulfill information requirements for jurisdictions such as Israel, in order to ensure complete disclosure of relevant references
  • Regularly monitor USPTO Patent Application Information Retrieval (PAIR) and other databases to verify status of client patent assets and, upon request, competitor patent assets
  • Independent docket review, and IDS workflow coordination with the client service team with respect to meeting upcoming deadlines
  • Conduct Patent Term Adjustment (PTA) reviews, prepare Letters of Candor and/or Requests for Reconsideration, as required
    Diligence, searches and other projects:
    • Assist with diligence projects and chain-of-title research/assignment issues
    • Conduct patent searches using various firm-subscribed databases and public data and prepare and update monitoring spreadsheets upon request
    • Prepare patent family trees in Visio
    • Prepare and maintain patent portfolio status charts
    • Respond to requests from clients' auditors for audit letters and follow internal audit letter procedures
    • Perform tasks in connection with patent opinions (e.g., conduct timekeeper opinion poll, prepare chain of title chart, patent schedule, Officer's Certificate, and back-up checklist)
    • Assist with US and foreign name change projects, as directed
      Skills & Experience
      Required:
      • Available to work overtime, as required
      • After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
      • 3+ years experience in an IP-related role
        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.

            EOE.

            Pursuant to the Colorado Equal Pay For Equal Work Act, please find the compensation range specific to this role if based in CO, as well as a description of bonus and benefits generally applicable across all US offices.

            - Colorado pay range for this role, with final offer amount dependent on skillset and experience - $40.00 to $48.00 hourly.
            - Other compensation may include an annual discretionary merit bonus.
            - Employees in this role will have the option to elect various benefits, including medical, dental, vision, accidental death and dismemberment, life insurance, dependent life insurance, long term disability, long-term care insurance, health savings accounts (if enrolled in an HDHP), health/dependent care spending accounts, 401(k) and profit sharing.
            - Other benefits include PTO and the option to participate in our tuition reimbursement program and wellness program, which includes fitness reimbursement each year.Pursuant to the salary transparency provisions of the New York City Human Rights Law (NYCHRL), please find the compensation range specific to this role if based in New York.
            • New York pay range for this role, with final offer amount dependent on skillset and experience: $46.00 to $54.00 hourly.

Keywords: Cooley LLP, Reston , IP Patent Prosecution Specialist (Quality Control), Other , Reston, Virginia

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