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International Patent Specialist at Cooley LLP

Cooley LLP


Mid Level

Colorado, USA

Not defined

29 Sep → 29 Oct


Job Description

Cooley is seeking International Patent Specialists to join the IP Practice Services team.

Position Summary : The International Patent Specialist (IPS) provides full support to the patent attorneys, agents and clients in filing and maintaining international and foreign national applications and patents. Specific duties and responsibilities include, but are not limited to, the following:

Pursuant to the Colorado Equal Pay For Equal Work Act, please find the compensation range specific to this role if based in CO, as well as a description of bonus and benefits generally applicable across all US offices.

  • Colorado pay range for this role, with final offer amount dependent on skillset and experience - $34.69 to $52.04 hourly
  • Other compensation may include an annual discretionary merit bonus.
  • Employees in this role will have the option to elect various benefits, including medical, dental, vision, accidental death and dismemberment, life insurance, dependent life insurance, long term disability, long-term care insurance, health savings accounts (if enrolled in an HDHP), health/dependent care spending accounts, 401(k) and profit sharing.
  • Other benefits include PTO and the option to participate in our tuition reimbursement program and wellness program, which includes fitness reimbursement each year.

Job Responsibilities

  • Coordinate with IP professional staff and practitioners as well as clients and foreign associates, with respect to all international patent prosecution matters
  • Monitor due dates and provide timely reminders to responsible attorneys/agents and clients. Responsible for meeting all assigned foreign due dates
  • Prepare and file PCT applications, foreign direct applications, foreign national phase applications, foreign design applications, and foreign divisional applications
  • Examine all incoming PCT actions and ensure timely reporting, prepare responses to invitations, requests under 92bis, publications, article 19/34 amendments, chapter II demands, search reports, written opinions, POA’s, IPRP’s and other formal communications
  • Handle all foreign actions and reporting including formalities (e.g., POA’s, assignments, declarations, certified copies of formal documents, etc.), status checks, requests for examination, publications, voluntary amendments, responses to official actions, notices of allowance, issue fee payments, grant, and patent term extensions
  • Analyze correspondence received from USPTO, WIPO, foreign national patent offices, and foreign associates to ensure accuracy of information for docketing purposes
  • Sustain working knowledge of changes in international patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
  • Generate foreign prosecution cost estimates and patent prosecution budgets as requested
  • Conduct worldwide searches to create portfolio status charts as requested
  • Complete administrative tasks including request docket numbers, create new files, maintain client data rooms, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Review daily and weekly docket reports provided by the central IP Docketing Department. Provide detailed docket annotations related to upcoming dates on a daily basis
  • Maintain a secondary docket of due dates for each assigned client as outlined in the Patent Prosecution Policies and Procedures Manual
  • Assist practitioners on all aspects of foreign filing and prosecution, as requested

Requirements / Qualifications

  • Available to work overtime, as required

  • After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications

  • 2+ years of relevant patent prosecution experience

  • Experience researching IP status and history in PTO databases, including, WIPO Patentscope, the EPO Patent Register, Hague Express database, as well as public databases in other jurisdictions

  • Possess working knowledge and keep abreast of rules according to the Manual of Patent Examining Procedure (MPEP), Patent Cooperation Treaty (PCT) Rules and Regulations, and national and regional patent laws, processes and procedures

  • Bachelor’s degree

  • Previous law firm experience

  • Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs

  • Ability to work independently and under pressure/tight time constraints

  • Creative and entrepreneurial approach to problem-solving and process improvement

  • Flexible and agile, ability to reprioritize with changes in the business

  • Strong initiative and a get-it-done attitude

  • Excellent communication and interpersonal skills

How To Apply

Apply through LegalJobs

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