Senior Patent Prosecution Specialist

Join to apply for the Senior Patent Prosecution Specialist role at Nixon Peabody LLP

Location: Chicago, IL

The Senior Patent Prosecution Specialist is responsible for overseeing and providing technical and administrative support to the team, attorneys, professional specialists, paralegals, and clients in all aspects of patent prosecution and IP practice management. A hybrid work schedule is available for this position.

To perform this job successfully, you must be able to perform each essential job responsibility listed above, satisfactorily, with or without reasonable accommodation. Nixon Peabody retains the right to change or assign other duties to this position. The requirements listed below are representative of the skills and abilities required.

• Review and manage daily dockets of assigned attorneys and professional specialists.
• Coordinate with timekeepers to ensure all deadlines are met on a daily basis.
• Perform electronic filings with the United States Patent and Trademark Office (USPTO).
• Oversee and manage new business intakes, including submitting new client, matter and pro bono intake requests, completing billing information and tracking status.
• Responsible for US patent filing and prosecution:
  • Review USPTO applications (e.g., provisional, non‑provisional and continuing applications).
  • Review follow‑on submissions, such as preliminary amendments, responses, requests for continued examination, missing parts and issue fee payments.
  • Review formality and other relevant USPTO documents (e.g., assignments, declarations and powers of attorney).
  • Review client correspondence in accordance with firm/client guidelines.
  • Review Information Disclosure Statements.
  • Delegate tasks and duties to Patent Support Assistant and Patent Support Specialists.
  • Conduct final patent prosecution review.
• Manage and disperse incoming USPTO mail and other related correspondence.
• Oversee phone, email and calendars for assigned timekeepers, ensuring all details are anticipated, arranged and well‑coordinated.
• Maintain knowledge of the status of ongoing client matters and keep up‑to‑date contact lists, anticipate next steps and prepare for them in advance.
• Manage special projects and prepare reports and summaries for attorneys and clients (e.g., creating spreadsheets, status reports and charts related to client‑specific patent portfolio management).
• Report correspondence accurately and timely, and in accordance with firm/client guidelines; respond to client inquiries and requests for information and provide status reports as needed.
• Maintain accurate electronic files in accordance with firm/practice group guidelines and procedures.
• Assist with processing any incoming/outgoing file transfers.
• Promptly perform administrative tasks (e.g., expense reimbursement, business development, etc.) in Inter Action, Chrome River and other firm applications.
• Assist with monthly billing and provide documentation and edits.
• Provide training and support to members of the team.
• Perform other duties as assigned.

• 5–8 years of patent prosecution experience, preferably within a law firm or professional services environment.
• Bachelor’s Degree or equivalent work experience required.
• Demonstrated understanding of the USPTO’s Electronic Filing System (EFS) and patent rules and regulations.
• Advanced knowledge and ability to effectively navigate the USPTO’s website (e.g., PAIR).
• Proficiency with Windows‑based software applications, including Microsoft Office Suite and the firm’s document management system (e.g., Net Documents).
• Exceptional interpersonal and communication skills, both verbal and written.
• Strong attention to detail with the ability to navigate multiple tasks and deadlines.

In accordance with applicable Federal and State laws, the anticipated annual salary range for this position, depending on location, is as follows:

• Chicago, IL: $77,500 to $131,500

In addition to a standard benefits package, this role may be eligible for additional contingent compensation based on an array of factors, including but not limited to: work performance, geographic location, work experience, education, and qualifications. Because such contingent…