IP US Filing Specialist (Late Filings)

Pacific Time: 9a - 6p
 

Position Summary: The IP US Filing Specialist (USFS) (Late Filing) provides full support to patent specialists supporting patent practitioners and clients in filing and maintaining US applications and patents. The USFS (Late Filing) provides coverage and support during late evening hours, ensuring timely assistance for urgent US filings and requests; and performing required quality control functions to ensure compliance with firm and USPTO requirements. Specific duties include, but are not limited to, the following:

Position responsibilities:

• Coordinate with patent business professionals, patent practitioners, and clients with respect to assigned US patent prosecution matters
• Manage incoming filing requests, tasks, including document preparation, and perform project work in accordance with established deadlines in the dedicated software platform
• Analyze correspondence received from USPTO to ensure accuracy of information
• Prepare and review required documents for filing, as requested; 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, or notice of publications

• Prepare draft reporting for substantive USPTO actions, including preparing draft amendments/responses to official actions and notices to file missing parts, obtaining identified references, and processing notices of allowance
• Complete Office Action and Notice of Allowance review forms addressing any inventorship/assignment issues, and preparing related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)
• Generate draft QC checklist to be included with draft filing documents

• Proof Letters Patent, including review of issued claims and bibliographic information
• 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
• Complete administrative tasks in support of US filing specialists
• 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
• Perform quality control reviews of US patent filings as needed, ensuring all documents are accurate, complete, and compliant with firm and USPTO requirements
• Triage and prioritize incoming filings for QC review, communicating expected turnaround times to IP professionals and practitioners
• Collaborate with the IP Quality Control Manager and other team members to continuously improve QC processes and outcomes
• Maintain high standards for quality control in all aspects of the role, proactively identifying and addressing potential errors or inconsistencies
• Apply the firm’s risk management directives and best practices to all late evening filings

IP US Filing Specialist Trainee designation (2+ years relevant IP experience):

The Trainee position carries out the same position responsibilities and functions as noted above; however, a Trainee’s work product is closely monitored by a supervisor or manager and the Trainee has a reduced volume of work or caseload. 

Non-Senior IP US Filing Specialist designation (3+ years relevant IP experience):

The Non-Senior Specialist carries out the position responsibilities and functions noted above and demonstrates the ability to consistently manage a regular workload and work independently.

Senior IP US Filing Specialist designation: (5+ years relevant IP experience):

The Senior Specialist carries out the position responsibilities and functions noted above.  In addition to performing the duties on this job description, a Senior IP US Filing Specialist is expected to lead by example in support of team initiatives and best practices, to add value by taking on special projects/initiatives for the benefit of the US Filing Specialist group and the IP Practice more broadly as directed by IP Leadership, and to participate in the training and mentoring of more junior colleagues.

Skills and 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
• Relevant IP experience (See minimum years of experience requirement by level above)

Preferred:

• Bachelor’s Degree
• Previous law firm experience
• Experience researching IP status and history in PTO databases, including USPTO systems (Patent Center), 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

Competencies:

• Excellent attention to detail
• Strong verbal and written communication skills
• Ability to organize, prioritize and coordinate multiple activities
• Strong judgment
• Team-player with collaborative spirit
• Unwavering ability to handle and maintain confidentiality regarding firm information, projects, client data (if applicable)
• High level of professionalism at all times

Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.

The expected hourly pay range for this position with a work schedule of 40 hours per week is $43.50 - $63.00 ($90,480.00 - $131,040.00 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.