Legal Specialist, Senior

Company:

Qualcomm Incorporated

Legal Group, Legal Group >
Legal Specialist

An international technology company leader in driving innovation and developing intellectual property and one of the world’s most productive Intellectual Property Departments has an opportunity within its Operations team. The ideal candidate will play a crucial role in helping to drive department initiatives and support operations planning activities. The position is ideally suited for a detail orientated professional looking to work in a collaborative, cross‑functional department.

• Reviewing a high volume of invoices comparing against internal procedures to ensure compliance
• Monitoring and managing docketing activities relating to quality reviews of patent correspondence, including global portfolio change requests and inventor information updates
• Monitoring and managing annuity activities relating to payments and due dates
• Audit support including generating reports from multiple systems (home‑grown and standard), manipulating, organizing, reviewing data, and providing analysis
• Assisting in the execution of the IP Department inventor awards program

A successful candidate for this position will have excellent time management, attention to detail, and general resourcefulness required to make sound judgements and decisions.

• Bachelor's degree and 3+ years of experience in the legal field and 3+ years of industry‑specific legal experience.
• Paralegal Certificate and 3+ years of experience in the legal field and 3+ years of industry‑specific legal experience.
• High School diploma or equivalent and 6+ years of experience in the legal field and 6+ years of industry‑specific legal experience.

• Preparing, filing, and prosecuting patents with the U.S. Patent and Trademark Office (USPTO) using ePCT. File PCT and U.S. applications electronically through Patent Center.
• Manage all related prosecution documents for US and PCT applications. This includes corresponding with foreign associates on foreign prosecution and timely reporting of official correspondence.
• Work with internal attorneys, agents, and international law firms utilizing knowledge of U.S. and foreign patent rules and requirements to respond to office actions, complete formalities, and provide all materials and support. Monitor and ensure all deadlines are met.
• Preparing and filing various patent‑related documents such as provisional, non‑provisional, PCT, and design application transmittal papers, preliminary amendments, responses to missing parts, petitions, requests for extensions of time, information disclosure statements, notices of appeal, and paying issue fees.
• Coordinating and executing Assignments, Powers of Attorney, and Declarations.
• Managing all aspects of US, PCT, and foreign patent prosecution, including drafting formality documents, attending to document legalization, and complying with priority document requirements.
• Contributing to administrative projects to uphold the highest legal and ethical standards in the IP Department.
• Processing patent‑related emails from the IP team and US and foreign patent counsel.
• Updating patent deadlines, entering commentary on their status, and removing completed deadlines upon confirmation of filing.
• Preparing, distributing, and updating docket reports for attorneys/agents as requested.
• Collaborating with attorneys/agents to track and ensure timely compliance with deadlines.
• Developing best practices and job aids to maintain a high‑functioning IP Department.
• Performing additional duties as assigned.

• Both in‑house OR private practice law firm experience required.
• Skilled in USPTO prosecution procedures, rules, and forms.
• Solid knowledge of U.S. and international patent filing procedures and rules.
• Supreme Docket Management, time management and organization skills.
• Impeccable multi‑tasking and prioritization in a fast‑paced environment with close attention to detail, accuracy, and timeliness.
• Skilled in exhibiting professionalism and composure in stressful situations and in meeting short deadlines.
• Ability to read, understand, and…