IP Patent Prosecution Specialist (Diligence)

Cooley LLP
Rose Hill, VA Full Time
POSTED ON 8/27/2022 CLOSED ON 10/31/2022

Job Posting for IP Patent Prosecution Specialist (Diligence) at Cooley LLP

IP Patent Prosecution Specialist (Diligence) Cooley is seeking an IP Patent Prosecution Specialist (Diligence) to join the IP Practice Services team. Position Summary: The IP Patent Prosecution Specialist (Diligence) is responsible for providing specialized patent portfolio analysis and diligence support to patent attorneys, agents and clients and carries out the full duties and responsibilities of an IP Patent Prosecution Specialist (PPS). Specific duties and responsibilities include, but are not limited to, the following: Position Responsibilities: Provide support for all patent diligence projects firm-wide Conduct client and competitor patent searches using various firm-subscribed databases and public data Review patent ownership and prepare chain-of-title review Research patent families and prepare patent family trees in Visio Prepare and maintain patent portfolio analysis reports Perform tasks in connection with Patent Opinions (e.g., conduct timekeeper opinion poll, prepare Officer’s Certificate and back-up checklist, and work with practitioner to confirm chain-of-title and patent schedules) Assemble patent claims charts Prepare Client Status reports Patent Prosecution Specialist (PPS) responsibilities: Oversee IDS management for assigned client patent portfolios Review daily and weekly custom PPS docket reports and update notes in Inprotech events Create and maintain complex client IDS spreadsheets in Excel and corresponding records in IDS support software (MaxIDS) Prepare IDS forms and collect and clean electronic copies of prior art references Monitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art references Perform pre-examination, examination, and post-allowance IDS reviews Assist with re-examination petitions to include organization of prior art for IDS’s Provide foreign associates with prior art lists to fulfill information requirements for jurisdictions such as Israel, in order to ensure complete disclosure of relevant references Regularly monitor USPTO Patent Application Information Retrieval (PAIR) and other databases to verify status of client patent assets and, upon request, competitor patent assets Independent docket review, and IDS workflow coordination with the client service team with respect to meeting upcoming deadlines 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 3 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 EOE. Pursuant to the Colorado Equal Pay For Equal Work Act, please find the compensation range specific to this role if based in CO, as well as a description of bonus and benefits generally applicable across all US offices. Colorado pay range for this role, with final offer amount dependent on skillset and experience -$40.00 to $48.00 hourly. Other compensation may include an annual discretionary merit bonus. Employees in this role will have the option to elect various benefits, including medical, dental, vision, accidental death and dismemberment, life insurance, dependent life insurance, long term disability, long-term care insurance, health savings accounts (if enrolled in an HDHP), health/dependent care spending accounts, 401(k) and profit sharing. Other benefits include PTO and the option to participate in our tuition reimbursement program and wellness program, which includes fitness reimbursement each year.
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