Patent Prosecution Specialist - IDS Specialist at Morgan, Lewis & Bockius LLP

Morgan, Lewis & Bockius LLP

Full-Time

Philadelphia, PA, USA

Not defined

23 Nov → 23 Dec

Job Description

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is seeking to hire a Patent Prosecution Specialist - IDS Specialist. Reporting to the Regional Manager of Patent Support Services, the Patent Prosecution Specialist - IDS Specialist will be responsible for supporting activities related to IDS preparation and filing support for the Boston and Philadelphia offices.

This position will reside in either the Boston, Chicago, New York, Orange County, Philadelphia or Washington D.C. office with a hybrid in-office/remote working schedule.

Responsibilities Include
• Prepare and file all Information Disclosure Statements (IDS) post completion of the Application.
• Filing and/or completion of Missing Parts/Requirements submissions for attorney review and undersign.
• Manage Prior Art Files including retrieving prior art from multiple databases.
• Attend to Post Allowance Filings submissions to include, but not limited to: Responses to Notices of Non-Compliant Information Disclosure Statements.
• Update and maintain database of prior art references.
• Prepare U.S. and foreign patent disclosures for filing with the USPTO.
• Prepare and file Information Disclosure Statements with the USPTO.
• Prepare disclosure listings for filing in foreign jurisdictions.
• Uploading information to databases and maintaining client information.
• Prepare and files documents with the U.S. Patent and Trademark Office such as, New Patent Applications, IDS, Preliminary Amendments, and formalities.
• Prepare client reporting letters and correspondence regarding formalities, Official Actions, Notices of Allowance, and Letters Patent.
• File with the World Intellectual Property Office International Bureau and foreign national patent offices in accordance with set guidelines and procedures.
• Prepare and file documents related to international and foreign national patent applications.
• Analyze PTO-issued documents for accuracy.
• Filing and/or completion of Missing Parts/Requirements submissions for attorney review and undersign.

Experience/Qualifications
• Minimum of two - three (2- 3) years year experience in Patent prosecution or intellectual property preferred and one (1) year experience in IDS preparation.
• Knowledge of and experience with preparing and filing Information Disclosure Statements, or relevant experience related to an Intellectual Property and legal environment.
• Knowledge of and experience with IP related technologies, such as EFS Web, PAIR, US and foreign IP law databases.
• Proficiency in Microsoft Office (Word, Outlook, and Excel).
• Strong attention to detail and organization skills.
• The ability to work well under pressure and participate in a team environment are required.
• Excellent verbal and written communication skills are necessary.
• Flexibility to work overtime preferred.

#LI - Hybrid

COVID-19: Morgan, Lewis & Bockius LLP requires its personnel to be fully vaccinated against COVID-19. Proof of vaccination is required.

Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.

Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.

California Applicants: Pursuant to the California Consumer Privacy Act, the following link contains the Firm's California Consumer Privacy Act Privacy Notice for Candidates which explains the categories of personal information that we collect and the purposes for which we use such personal information. CCPA Privacy Notice for Candidates

Morgan Lewis & Bockius LLP is also an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.

If You Are Interested In Applying For Employment With Morgan Lewis And Need Special Assistance Or An Accommodation To Use Our Website Or To Apply For a Position, Please Call Or Email The Following Contacts
• Professional Staff positions: Please call 888.534.5003 or email [email protected]
• Lawyer/Summer Associate positions: [email protected]

Morgan, Lewis & Bockius, LLP reasonably accommodates applicants and employees who need them to perform the essential functions of the job because of disability, religious belief, or other reason protected by applicable law. If you believe you need a reasonable accommodation during the application process, please contact Karen Queen-LeBoo at [email protected]

Job Responsibilities

  • Reporting to the Regional Manager of Patent Support Services, the Patent Prosecution Specialist - IDS Specialist will be responsible for supporting activities related to IDS preparation and filing support for the Boston and Philadelphia offices
  • This position will reside in either the Boston, Chicago, New York, Orange County, Philadelphia or Washington D.C. office with a hybrid in-office/remote working schedule
  • Prepare and file all Information Disclosure Statements (IDS) post completion of the Application
  • Filing and/or completion of Missing Parts/Requirements submissions for attorney review and undersign
  • Manage Prior Art Files including retrieving prior art from multiple databases
  • Attend to Post Allowance Filings submissions to include, but not limited to: Responses to Notices of Non-Compliant Information Disclosure Statements
  • Update and maintain database of prior art references
  • Prepare U.S. and foreign patent disclosures for filing with the USPTO
  • Prepare disclosure listings for filing in foreign jurisdictions
  • Uploading information to databases and maintaining client information
  • Prepare and files documents with the U.S. Patent and Trademark Office such as, New Patent Applications, IDS, Preliminary Amendments, and formalities
  • Prepare client reporting letters and correspondence regarding formalities, Official Actions, Notices of Allowance, and Letters Patent
  • File with the World Intellectual Property Office International Bureau and foreign national patent offices in accordance with set guidelines and procedures
  • Prepare and file documents related to international and foreign national patent applications
  • Analyze PTO-issued documents for accuracy

Requirements / Qualifications

  • Knowledge of and experience with preparing and filing Information Disclosure Statements, or relevant experience related to an Intellectual Property and legal environment

  • Knowledge of and experience with IP related technologies, such as EFS Web, PAIR, US and foreign IP law databases

  • Proficiency in Microsoft Office (Word, Outlook, and Excel)

  • Strong attention to detail and organization skills

  • The ability to work well under pressure and participate in a team environment are required

  • Excellent verbal and written communication skills are necessary

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