IP Specialist
IP Specialist
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Job Description
The IP Specialist is responsible for supporting functions of the Americas Intellectual Property team. This position is responsible for all aspects of patent prosecution with particular emphasis on tracking and coordinating fulfillment of all deadlines (foreign and domestic) with a diverse team of IP Specialists in multiple jurisdictions.
Preparation of formal documents and filing of U.S. and PCT applications as well as coordination of prosecution activities with in-house attorneys and foreign associates are key responsibilities. This is a billable position requiring accurate and timely submission of matter attributable billable hours.
JOB DESCRIPTION
PATENT PROSECUTION
- Responsible for daily tracking and clearance of patent prosecution docket for both foreign and domestic matters insuring all statutory and non-statutory deadlines are met without fail and provide timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
- Prepare documents such as issue fees responses amendments provisional and non-provisional utility national stage and design applications information disclosure statements declarations statements of use and extensions in compliance with USPTO guidelines and reporting filings to clients.
- Prepare formal documents for review including declarations powers of attorney and assignments for execution by the applicant or inventor.
- Coordinate filing of sequence listings and formal drawings prepared by outside vendors.
- Confirm the status of patent and trademark cases with the U.S. Patent and Trademark Office.
- Review face and claims of Letters Patent for accuracy.
- Prepare responses to notices (missing parts office actions disclosure statements etc.).
- Prepare Notice of Allowance checklists for attorney review.
- Prepare and file Information Disclosure Statements maintain prior art reference spreadsheets and tracking documents.
ADMINISTRATIVE
- Act as an advocate for the IP team this position supports by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
- Review and submission of IP-related third-party invoices and USPTO deposit account fees.
- Maintain tracking documents for client portfolios to indicate priority and subject-matter related applications including monitoring pending claims across global patent portfolios and coordinating cross-citing of prior art references.
- Assist with researching issues relating to monthly client billing such as client inquiries estimates budget tracking or invoice discrepancies.
- Work directly with billing department to apply fixed-fee patent prosecution schedules to monthly proformas.
- All members of the firm are encouraged to participate in our Global Responsible Business program.
- Other duties and projects as assigned.
QUALIFICATIONS
REQUIRED SKILLS
- Demonstrated attention to detail
- Strong communication (written and verbal) interpersonal and organizational skills.
- Proactive with the ability to follow through with the resolution of issues with minimal supervision.
- Ability to meet deadlines under tight time constraints and other demands.
- Flexible attitude with the ability to multi-task and deal well with changing assignments and priorities.
EDUCATION CERTIFICATIONS AND/OR EXPERIENCE
- Five (5) years of patent prosecution support experience preferred.
- Experience with prosecution of technology energy biotechnology and pharmaceutical sector portfolios preferred.
- Billing experience including electronic billing preferred.
- Bachelors degree preferred.
HOURS
Core hours are Monday through Friday 9:00 a.m. 5:30 p.m. including one hour for lunch. Must be flexible for overtime.
This position is posted in multiple locations.
In Houston the annualized salary range for this position is $83000 to $114500.
In Boston the annualized salary range for this position is $90000 to $125000.
In San Francisco the annualized salary range for this position is $105000 to $140000.
In Washington DC the annualized salary range for this position is $90000 to $125000.
All annualized salaries ranges are dependent on the candidates overall experience and other job-related factors permitted by law.
Full time employees may be eligible for a discretionary addition full time employees as well as some part time employees will be eligible for the firms fringe benefits as they currently exist.
This job description sets forth the responsibilities of this position and may be changed from time to time as shall be determined.
Hogan Lovells is an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race color religion sex pregnancy age national origin disability sexual orientation gender identity or expression marital status genetic information protected Veteran status or other factors protected by law.
Hogan Lovells complies with federal and state disability laws and makes reasonable accommodations for applicants and candidates with disabilities. If reasonable accommodation is needed to participate in the job application or interview process please contact our Benefits Department at
Required Experience:
Unclear Seniority
Employment Type
Full-Time
