Patent Prosecution Specialist

Morgan, Lewis & Bockius LLP, one of the world's leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is seeking to hire a Patent Prosecution Specialist. This position will be responsible for support activities related to patent prosecution, including the preparation and filing of documents with the United States Patent and Trademark Office, World Intellectual Property Office International Bureau and foreign national patent offices in accordance with set guidelines and procedures, and preparation and filing of documents related to international and foreign national patent applications.

This position can reside in any of the following offices: Boston, MA; Chicago, IL; Houston, TX; Orange County, CA; Philadelphia, PA; San Francisco, CA; Silicon Valley, CA; Washington, DC with a hybrid in-office/remote working schedule.

Responsibilities:

• Prepare patent prosecution documents including transcribing instructions (written and/or verbal), and preparing and revising patent application forms, correspondence, reports, and memoranda.
• Review and process Filing Receipts, Notices of Recordation, Office Actions, Notices of Allowance, Recordations of Assignments, granted Patent, and Notices of Publication.
• Prepare pre-issuance documents, which includes Issue Fee Payments, and Requests for Recomputations of Patent Term Adjustment.
• Prepare and upload documents with the USPTO, including new patent applications, responses to Office Actions, Request for Filing Receipt, Request for Corrected Filing Receipt, Issue Fees, Formal Drawings and New Patent Applications.
• Prepare non-technical prosecution documents, including Notices to File Missing Parts, Notices to File Corrected Application Papers, Inventor Declarations, and Powers of Attorney.
• Review patent files for processing and preparation.
• Prepare IDS from international and foreign search reports.
• Prepare client reporting letters and/or correspondence to the foreign associates regarding IDS, foreign disclosures, etc.
• Analyze PTO-issued documents for accuracy (such as filing receipts, assignment documents, office actions, etc.).
• Provide copies of documents filed to client.
• Monitor patent docket.
• Contact PTO with status questions.
• Contact patent examiners regarding missing information.
• Prepare and file international/foreign national documents, including PCT Requests and PCT Demands, Responses to PCT Application inquiries and invitations and National phase application order letters.
• Possess knowledge of and keep abreast of rules according to the 37 CFR and MPEP.

Experience/Qualifications:

• Bachelor's degree preferred.
• Minimum of one year of related experience is required preferably including foreign prosecution.
• To perform this job successfully, the candidate will be flexible, have the ability to manage multiple projects within tight deadlines and work well in a team-oriented environment.
• Strong organizational, communication and interpersonal skills and attention to detail a must. Flexibility to work overtime preferred.

Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.

Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.

California Applicants: Pursuant to the California Consumer Privacy Act, the following link contains the Firm's California Consumer Privacy Act Privacy Notice for Candidates which explains the categories of personal information that we collect and the purposes for which we use such personal information.

Morgan Lewis & Bockius LLP is also an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.

If you are interested in applying for employment with Morgan Lewis and need special assistance or an accommodation to use our website or to apply for a position, please call or email the following contacts:

• Professional Staff positions: Please call 888.534.5003 or email
• Lawyer/Summer Associate positions:

Morgan, Lewis & Bockius, LLP reasonably accommodates applicants and employees who need them to perform the essential functions of the job because of disability, religious belief, or other reason protected by applicable law. If you believe you need a reasonable accommodation during the application process, please contact Talent Acquisition at globalhumanresources@morganlewis.com.