Talent.com
IP US Filing Specialist
IP US Filing SpecialistCooley LLP • San Diego, CA, United States
IP US Filing Specialist

IP US Filing Specialist

Cooley LLP • San Diego, CA, United States
job_description.job_card.30_days_ago
serp_jobs.job_preview.job_type
  • serp_jobs.job_card.full_time
job_description.job_card.job_description

IP US Filing Specialist

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

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

Position Responsibilities :

  • 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 (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, 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, and the Trademark Manual of Examining Procedure (TMEP)
  • Competencies :

  • 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
  • Ability to work independently and under pressure / tight time constraints
  • Creative and entrepreneurial approach to problem-solving and process improvement
  • Flexible and agile, ability to reprioritize with changes in the business
  • Strong initiative and a get-it-done attitude
  • Excellent communication and interpersonal skills
  • Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.

    EOE.

    The expected hourly pay range for this position with a work schedule of 40 hours per week is $42.00 - $61.00 ($87,360.00 - $126,880.00 annually). Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate.

    We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and / or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and / or adults and other parental support benefits. In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off ("PTO") and 10 paid holidays each year. We provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.

    serp_jobs.job_alerts.create_a_job

    Ip Specialist • San Diego, CA, United States

    Job_description.internal_linking.related_jobs
    Credentialing Specialist

    Credentialing Specialist

    TrueCare • San Marcos, CA, San Diego County, CA; California, United States
    serp_jobs.job_card.full_time
    TrueCare is a trusted healthcare provider serving San Diego and Riverside Counties, offering compassionate and comprehensive care to underserved communities. We are committed to making healthcare ac...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_hours • serp_jobs.job_card.promoted • serp_jobs.job_card.new
    Senior WLAN IP Verification Engineer (ARM SoC)

    Senior WLAN IP Verification Engineer (ARM SoC)

    Nutanix • San Diego, CA, United States
    serp_jobs.job_card.full_time
    A leading technology company in San Diego is seeking a Design Verification Engineer to join the Integrated Wireless Technology team. The role involves developing hardware blocks for wireless technol...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_1_day • serp_jobs.job_card.promoted
    Legal Practice Specialist IP Litigation

    Legal Practice Specialist IP Litigation

    McDermott Will & Emery • San Diego, California, USA
    serp_jobs.job_card.full_time
    Build your big career with the firm that does.McDermott Will & Schulte is a leading global law firm that brings together more than 1750 lawyers and 3200 business professionals.We celebrate exce...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_days • serp_jobs.job_card.promoted
    Clinical Program Director IOP / PHP

    Clinical Program Director IOP / PHP

    Evolve Adolescent Behavioral Health • San Diego, CA, US
    serp_jobs.job_card.full_time
    Join a team that cares as deeply as you do.Evolve Treatment Centers is home to passionate professionals dedicated to providing the highest level of behavioral health care to adolescents 12–17 facin...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_days • serp_jobs.job_card.promoted
    D365 ERP Integration Specialist

    D365 ERP Integration Specialist

    WD-40 Company • San Diego, CA, United States
    serp_jobs.job_card.full_time
    D365 ERP Integration Specialist.Are you passionate about connecting systems, streamlining operations, and driving smarter decision-making across an organization? In this pivotal role, you will ensu...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_days • serp_jobs.job_card.promoted
    Travel MRI Tech - $2548 / Week

    Travel MRI Tech - $2548 / Week

    Uniti Med • San Marcos, CA, US
    serp_jobs.job_card.full_time
    Uniti Med is seeking an experienced MRI Tech for an exciting Travel Allied job in San Diego, CA.Shift : Inquire Start Date : ASAP Duration : 13 weeks Pay : $2548 / Week. Uniti Med provides career opport...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_30 • serp_jobs.job_card.promoted
    HSPD-12 : Government Badging & Credentialing Specialist (San Diego, CA - REF1822D) • •

    HSPD-12 : Government Badging & Credentialing Specialist (San Diego, CA - REF1822D) • •

    Citizant • San Diego, CA, United States
    serp_jobs.job_card.full_time
    Citizant is a leading provider of professional IT services to the U.We seek to address some of our country's most pressing challenges in the areas of Agile application development, Enterprise Data ...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_30 • serp_jobs.job_card.promoted
    Credentialing Specialist

    Credentialing Specialist

    TrueCare Careers • San Marcos, California, US
    serp_jobs.job_card.full_time
    TrueCare is a trusted healthcare provider serving San Diego and Riverside Counties, offering compassionate and comprehensive care to underserved communities. We are committed to making healthcare ac...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_hours • serp_jobs.job_card.promoted • serp_jobs.job_card.new
    Credentialing Specialist

    Credentialing Specialist

    Truecare • San Marcos, California, US
    serp_jobs.job_card.permanent
    A high number of candidates may make applications for this position, so make sure to send your CV and application through as soon as possible. TrueCare is a trusted healthcare provider serving San D...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_hours • serp_jobs.job_card.promoted • serp_jobs.job_card.new
    IP US Filing Specialist

    IP US Filing Specialist

    Cooley • San Diego, CA, United States
    serp_jobs.job_card.full_time
    Cooley is seeking an IP US Filing Specialist to join the IP Services team.The IP US Filing Specialist (USFS) provides full support to patent attorneys, agents, and clients in filing and maintaining...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_days • serp_jobs.job_card.promoted
    IP - LVN - S

    IP - LVN - S

    PACS Inc • El Cajon, CA, United States
    serp_jobs.job_card.full_time
    Every effort has been made to identify the essential functions of this position.However, it in no way states or implies that these are the only duties you will be required to perform.The omission o...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_30 • serp_jobs.job_card.promoted
    Network Specialist

    Network Specialist

    Grossmont Union High School District • El Cajon, CA, US
    serp_jobs.job_card.full_time
    Purpose Statement : The job of Network Specialist II is done for the purpose / s of designing, installing, upgrading, and maintaining LAN and WAN networks, Internet access, Voice over IP Phones and le...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_days • serp_jobs.job_card.promoted
    Payment Application Specialist

    Payment Application Specialist

    Pacer Group • San Diego, CA, United States
    serp_jobs.job_card.full_time
    Position : Payment Application Specialist - Billings Specialist.Shift : Day, 5x8-Hour (08 : 00 - 16 : 30).The Payment Application Specialist is responsible for researching, auditing, reconciling, and app...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_days • serp_jobs.job_card.promoted
    IP Attorney

    IP Attorney

    Jobot • San Diego, CA, US
    serp_jobs.job_card.full_time
    Top-Tier Am Law Firm is looking for an IP Attorney to join their growing team!.This Jobot Job is hosted by : Scott Rundlett. Are you a fit? Easy Apply now by clicking the "Apply Now" button and sendi...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_30 • serp_jobs.job_card.promoted
    IP - LVN - S

    IP - LVN - S

    San Diego Post-Acute • El Cajon, CA, United States
    serp_jobs.job_card.full_time
    Every effort has been made to identify the essential functions of this position.However, it in no way states or implies that these are the only duties you will be required to perform.The omission o...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_30 • serp_jobs.job_card.promoted
    Fiber Optic Specialty Engineer

    Fiber Optic Specialty Engineer

    Leidos Inc • San Diego, CA, United States
    serp_jobs.job_card.full_time
    Leidos, is the largest independent naval architecture and marine engineering firm in the United States.Since our founding in 1929, 24 classes of combatants and nearly 7,000 vessels have been built ...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_30 • serp_jobs.job_card.promoted
    Billing and Reimbursement Analyst - Hybrid - 137554

    Billing and Reimbursement Analyst - Hybrid - 137554

    UC San Diego Health • San Diego, CA, United States
    serp_jobs.job_card.full_time
    UCSD Layoff from Career Appointment.Apply by 11 / 25 / 25 for consideration with preference for rehire.All layoff applicants should contact their Employment Advisor. Eligible Reassignment clients should...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_variable_days • serp_jobs.job_card.promoted
    Managing Partner, IT Strategy Consulting, HTTP (High-Tech Providers)

    Managing Partner, IT Strategy Consulting, HTTP (High-Tech Providers)

    Gartner • San Diego, CA, United States
    serp_jobs.job_card.full_time
    Gartner's Consulting business is an.Gartner's industry-leading IT Research.From CIOs, to leaders in business and government, we help Gartner clients across enterprises translate insights into trans...serp_jobs.internal_linking.show_more
    serp_jobs.last_updated.last_updated_30 • serp_jobs.job_card.promoted