IP US Filing Specialist

IP US Filing Specialist

Cooley is seeking an IP US Filing Specialist to join the IP Services team.

Hybrid Schedule Philosophy:
As part of the Cooley culture, we recognize and appreciate the value of being together, in person, to build comradery with others in the office and to be a contributing member of the Cooley office. However, we also appreciate the benefits and flexibility that come from remote working. As such, the default assumption for employees and partners is a hybrid schedule: some in-office presence and some work from home days.

Employees on a hybrid work schedule must work from their regular state of residence during hybrid remote days and are expected to be within a commutable distance of a Cooley office. (Department director or manager will provide direction on your schedule and any in-office expectations).

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:

• 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 (Patent Center), WIPO Patentscope and, the EPO Patent Register, 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

Competencies:

• Excellent attention to detail
• Strong verbal and written communication skills
• Ability to organize, prioritize and coordinate multiple activities
• Strong judgment
• Team-player with collaborative spirit
• Unwavering ability to handle and maintain…