IP Patent Specialist

  • 3 Park Plaza, Irvine, CA 92614, USA
  • Full-time

Job Description

Founded with a commitment to build a different kind of law firm, Crowell & Moring LLP today is an international law firm representing clients in litigation and investigations, regulatory and transactional matters. We are internationally recognized for our representation of Fortune 500 companies in high-stakes litigation, as well as our ongoing commitment to pro bono service and diversity. With nearly 550 lawyers based in seven offices in the United States and Europe, the firm helps international corporations and emerging enterprises navigate complex legal challenges and create business solutions across the globe.

Job Summary
IP Patent Specialists are assigned to client/attorney teams and specified routine activities and are responsible for using their intellectual property knowledge to determine and prepare appropriate work product with minimal attorney supervision.

Job Responsibilities
•    Prepares and files documents related to utility (national phase, continuing, and provisional) applications and design applications, including preliminary amendments, at the United States Patent and Trademark Office (“USPTO”). 
•    Prepares and files other USPTO Formalities documents, Information Disclosure Statements/form SB08A/B (including identifying, electronically obtaining, and accurately citing U.S., Foreign, ISR and NPL references based on client instructions, documents received, and prior file histories), pays of Issue/Publication Fees, and other documents as directed by management. 
•    Prepares Office Action reporting letters, USPTO general correspondence, and documents to be filed with the USPTO in “signature ready order” (i.e. routine documents rarely require modification by a manager or attorney prior to filing/sending).
•    Prepare Notice of Allowance Checklist and reporting the same to client.
•    Prepare and file Issue Fees with the USPTO; report same to client.
•    Prepares all documents (including client invoices) to be filed and/or sent to the client in “signature ready order” (i.e. routine documents rarely require modification by a manager or attorney prior to filing/sending).
•    Prepares all documents to be filed and/or sent to the client in “signature ready order” (i.e. routine documents rarely require modification by a manager or attorney prior to filing/sending).
•    Assists with the second eye proofreading of USPTO Notices and Official Filing Receipts.
•    Prepares and files Notices to Correct Filing Receipts.
•    Successfully completes a heavy volume of filing and administrative deadlines, including handling last minute filings and requests from clients, attorneys, and firm administration. 
•    Strictly adheres to established policies and procedures to meet expectations of firm administration, clients, and attorneys; identifies and applies special client instructions and attorney preferences related to workflows and document preparation.
•    Reads, dockets, and distributes incoming mail from the U.S. Patent and Trademark Office “USPTO” using electronic procedures. 
•    Maintains up-to-date knowledge of the rules of practice in relation to the USPTO.

Qualifications

Requirements:

Education
This position requires a Bachelor’s Degree in a field.  Equivalent training and experience will substitute for education.

Experience
The position requires a minimum of three (3) or more years of matter management experience in US patent prosecution.

Knowledge, Skills and Abilities
•    Demonstrated ability to communicate clearly and effectively, both orally and in writing with attorneys, staff and external contacts. 
•    Demonstrated ability to organize and prioritize a heavy workload in a dynamic and complex environment to meet deadlines and daily requirements, while maintaining exceptional accuracy.
•    Ability to provide quality client service to both internal and external contacts, regarding non-legal matters of a routine nature.
•    Demonstrated ability to work effectively both independently and with others in a cooperative, enthusiastic and friendly manner to accomplish position functions and participate in team efforts.
•    Demonstrated knowledge of U.S. patent prosecution requirements and competence in filing documents at the USPTO. 
 

Additional Information

Crowell & Moring LLP offers a competitive compensation and comprehensive benefits package which includes progressive options such as back up child care, wellness programs, cultural events and social activities. We take great pride in our positive, friendly culture that rewards hard work and success, at the same time recognizing the importance of family and community service.

EOE m/f/d/v
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