Job Description

The US Filing Specialist performs complex and specialized work related to the specific function of providing patent prosecution support for clients to whom assigned. Provides organizational and substantive support for assigned clients. Responsibilities include providing client support for portfolio management, filings with the U.S. Patent and Trademark Office (USPTO) and tracking deadlines. Responsible for monitoring and expediting workflow for assigned clients. Ensures client services and satisfaction are attained in all areas of position.

Primary Responsibilities

• Applying detailed knowledge of patent prosecution, manage all aspects of administrative patent prosecution support for U.S. patent matters of assigned clients.
• Develop and maintain strong relationships with assigned clients to deliver responsive and appropriate client service. Anticipate future requests based on understanding of client business needs.
• Maintain manual docket (aka “Redbook”) and review electronic dockets for assigned clients; proactively communicate with and remind practitioners of due dates; attend to pertinent entries with docket department.
• Utilizing expertise of the patent practice and adhering to USPTO procedures and firm policies and protocols, timely create and file accurate and comprehensive USPTO submissions, including Information Disclosure Statements.
• In support of managing client portfolios, process incoming mail related to U.S. patent prosecution and report USPTO correspondence to clients. Maintain virtual files and case records.
• Apply specialized knowledge of client preferences to assemble, establish, maintain and adhere to specific guidelines for assigned clients.
• Respond to client inquires regarding routine patent portfolio matters and provide status reports to clients upon request.
• Continually stay up to date on knowledge of US patent rules, including but not limited to the 37 C.F.R. and MPEP rules.
• Provide back-up support for colleagues to complete overflow work.
• Assist with initiating client file transfers and disengaging clients.
• Assist with keeping daily fixed fees and submitting the same to accounting.
• Assist with special projects as needed, including but not limited to client name and address change requests, client status reports, and file reviews.
• Proactively mentors and regularly assists with training junior staff in department.

ABOUT YOU

• Bachelor’s degree or previous patent legal experience preferred.
• A minimum of 2-3 years of progressive patent experience required.
• Ability to take an assignment from inception to completion with minimal supervision or by following broad guidelines to deliver positive results.
• Detailed and advanced knowledge of USPTO procedures and keeps abreast of 37 C.F.R. and Manual of Patent Examining Procedure (MPEP) rules.
• Detailed and advanced knowledge of the USPTO website, including Patent Center, Assignment Center, and other patent related websites.