IP Lead Patent Prosecution Specialist (Best Practices)

Cooley LLP
West Boxford, MA Full Time
POSTED ON 8/22/2022 CLOSED ON 10/31/2022

Job Posting for IP Lead Patent Prosecution Specialist (Best Practices) at Cooley LLP

IP Lead Patent Prosecution Specialist (Best Practices) Cooley is seeking an IP Lead Patent Prosecution Specialist (Best Practices) to join the IP Practice Services team. Position Summary: The IP Lead Patent Prosecution Specialist (Best Practices) is primarily responsible for the integration of new IP Patent Prosecution Specialists, the progression of the Trainees, and the ongoing education and development of each specialist in accordance with established best practices. Specific duties and responsibilities include, but are not limited to, the following: Position Responsibilities: Oversee onboarding process of new hires and facilitate IP Patent Prosecution Specialist (PPS) specific orientation meetings and trainings Spearhead the development of training tools, guides, and templates for all PPS responsibilities Work directly with IP Practitioners and Specialists to identify challenges, participate in problem solving, identify possible solutions, and discern when to escalate to Management Responsible for oversight of the development and execution of a PPS Trainee program including coordinating and balancing daily workflows, providing direction for coverage when a team member is out of the office, and assigning short and long-term projects Solicit feedback from practitioners to ensure service levels meet expectations, actively monitoring trainee dockets, reviewing trainees’ deliverables, identifying strengths and weaknesses, facilitating individual continuous feedback meetings, and providing ongoing support and education to the trainees Serve as point-of-contact for MaxIDS inquires and training needs Provide one-on-one training and mentorship to all PPSs on any core responsibility of their job Oversee completion and ongoing maintenance of the PPS procedures manual Routinely review docketing procedures, workflows and PPS docket entries to identify and correct issues Work with IP Docketing to audit the IP Management System and clean-up IDS events Generate metrics of department workflow and report to management with recommendations for areas of improvement Review and analyze correspondence from IP Practitioners, IP Leadership, and Specialists, draft communications regarding best practices around Cooley’s Disclosure Policy, and disseminate information to team Collect metrics and data analytics related to meeting Disclosure obligations and requirements and regularly report on same (e.g., identify trends, shortfalls and/or growth opportunities) Initiate responses to, and research of, complex queries addressed to the PPS team Collaborate with other IP Lead Specialists for workflow, trainings, data consistency, and to provide coverage as needed Contribute to PPS monthly department meeting agendas, leading various topics and discussions Develop routine training topics and schedules, send the PPS “Did You Know” emails, and initiate all forms of continuous training and education for the PPS team Keep current with regulatory changes in IP prosecution Organize and facilitate training for new IP Diligence tools and software Work with other PPS Leads to recommend educational opportunities to enhance PPS skills, competencies, and performance Work with Partner leaders and IP Leadership to implement effective support for the Information Disclosure requirements Independently manage special projects and duties General responsibilities: Meet 60% of annual billable benchmark of 1560 hours (benchmark may be reduced to accommodate for reduced schedules) Record all time daily (billable, productive, admin and PTO) and in accordance with specified narratives where applicable Act as a back-up to the IP Client Service Manager and other PPS(s) Maintain high standards for internal/external client service and quality control Champion and promote diversity, equity and inclusion to help drive positive change Prepare and deliver oral and written communications that are concise and convey tenacity, enthusiasm, and innovative thinking Consistently meet deadlines and effectively complete operational and project-based assignments Adhere to IP principles, specific policies, procedures and best practices Actively participate in team training sessions and meetings and provide appropriate feedback or topic ideas Immediately report all risk management-related concerns following proscribed risk reporting process All other duties as assigned or required Skills & Experience Required: Available to work overtime, as required After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications 4 years’ experience in an IP-related role 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 Ability to prioritize work tasks and manage deadlines based upon internal and external client needs Cooley offers a competitive compensation and excellent benefits package. EOE.
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