IP US Filing Specialist

Cooley is seeking an IP US Filing Specialist to join the IP Services team.

*Hybrid Schedule Philosophy: As part of the Cooley culture we recognize and appreciate the value of being together in person to build comradery with others in the office and to be a contributing member of the Cooley office. However we also appreciate the benefits and flexibility that come from remote working. As such the default assumption for employees and partners is a hybrid schedule: some in-office presence and some work from home days. Employees on a hybrid work schedule must work from their regular state of residence during hybrid remote days and are expected to be within a commutable distance of a Cooley office. (Department director or manager will provide direction on your schedule and any in-office expectations).

Position Summary: The IP US Filing Specialist (USFS) provides full support to patent attorneys agents and clients in filing and maintaining US applications and patents. Specific duties include but are not limited to the following

Position Responsibilities:
Coordinate with IP professional staff patent practitioners and clients with respect to assigned US patent prosecution matters
Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; forward all USPTO mail to Client Team and provide timely reminders of upcoming dates
Prepare and review required documents for filing; 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 publications along with preparation of reminder letters to clients of upcoming deadlines
Handle and report all substantive USPTO actions with input from Responsible Attorney including preparing draft amendments/responses to official actions and notices to file missing parts obtaining identified references processing notices of allowance including attending to the Notice of Allowance Review Form in coordination with the Patent Prosecution Specialist and Patent Practitioner addressing any inventorship/assignment issues and preparing related paperwork (e.g. extensions RCEs corrected ADSs name changes maintenance fee addresses etc.)
Proof and forward Letters Patent to the client
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
Maintain a secondary docket of due dates for each assigned client as outlined in the Patent Prosecution Policies and Procedures Manual

Review docket reports and provide detailed annotations related to upcoming dates daily
Complete administrative tasks including maintenance of client data rooms responding to deadlines and changes to dockets along with other communication with the central Docketing Department run patent reports transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff where applicable
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

Skills & 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
3 years relevant IP experience

Preferred:
Bachelors Degree
Previous law firm experience

Experience researching IP status and history in PTO databases including USPTO systems (PatentCenter) WIPO Patentscope and the EPO Patent Register 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.

EOE.

The expected hourly pay range for this position with a work schedule of 40 hours per week is $47.50 - $64.00 ($98800.00 - $133120.00 annually). Please note that final offer amount will be dependent on geographic location applicable experience and skillset of the candidate.