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Patent Prosecution Specialist

Company: Cooley
Location: Palo Alto
Posted on: June 8, 2021

Job Description:

Patent Prosecution Specialist

Cooley LLP is seeking an experienced Patent Prosecution Specialist (PPS) to provide specialized support to assigned clients in the patent prosecution and counseling practice group. Specific duties include, but are not limited to:

Information Disclosure Statement (IDS) Support

Oversee IDS management for assigned client patent portfolios, often with independent initiative; review daily and weekly custom PPS docket reports provided by the IP docketing department; create and maintain complex client IDS matrices in Excel; collect references for citation and prepare IDS forms; prepare and maintain patent family groupings by conducting research for patent family tree information and working with partners/attorneys/agents to identify and specify related subject matter in multiple trees for cross-citation purposes; review all incoming U.S. Patent and Trademark Office (USPTO) and non-U.S. patent correspondence in respective client portfolios to assess need for preparation of new IDS's in related, co-pending U.S. applications pursuant to IDS matrices; prepare correspondence to foreign associates in jurisdictions with prior art disclosure requirements such as Israel, to ensure complete citation of relevant references based on U.S. IDS citations.

Diligence, Searches and Other Projects

Assist with diligence projects and chain of title research/assignment issues; prepare patent searches using various firm-subscribed databases and public data; maintain continuing patent searches and patent clearance studies; conduct worldwide patent searches, create and update patent family trees in Visio, and maintain patent portfolio status charts; conduct Patent Term Adjustment (PTA) reviews, prepare Letters of Candor and/or Requests for Reconsideration, as required; conduct audit response polls in connection with periodic requests from clients' auditors; 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 billable patent projects such as U.S. and foreign name change projects, as directed.

The ideal candidate should have 2+ years prior experience managing a patent prosecution docket, including managing complex U.S. IDS practices and non-U.S. prior art disclosures and proficient knowledge of document management software and performing time entry. Successful candidates will be 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. Strong initiative and a get-it-done attitude are expected of the person in this role. A Bachelor's degree and previous law firm experience is preferred. 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 - $34.69 - $52.04 per hour
  • 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

Keywords: Cooley, Palo Alto , Patent Prosecution Specialist, Other , Palo Alto, California

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