Intellectual Property Specialist

D3 Search is actively seeking an IP Specialist (patent prosecution) on behalf of a highly respected AMLAW ranked international law practice with a long-standing office in San Francisco, CA (94111).

Position Title🎯:

IP Specialist

• Note: 5 years of patent prosecution is REQUIRED.

Location/Map📌:

San Francisco, CA 94111

Employment Status:

Full-time/direct-hire employment. Non-exempt role.

Employer Work Model:

Hybrid 4 onsite/1 remote work model.

Position Summary📒:

The IP Specialist (patent prosecution) is responsible for supporting the 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 US 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 matters attributable to billable hours. Other responsibilities include a variety of IP-related administrative tasks.

Importantly, this position requires proactively completing tasks and following through with the speedy resolution of issues with minimal supervision, including the ability to meet deadlines under very tight time constraints and other demands.

Duties & Responsibilities 📁:

• Daily tracking and clearance of patent prosecution docket for both foreign and domestic matters, ensuring all statutory and non-statutory deadlines are met without fail and providing timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
• Prepare and file documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, PCT 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, and maintain prior art reference spreadsheets and tracking documents.
• Act as an advocate for the IP team. This position supports the IP team 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 the Billing Department to apply fixed-fee patent prosecution schedules to monthly proformas.

Skills & Competencies💡:

• Excellent 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 multitask and deal well with changing assignments and priorities.

Education & Certifications🎓:

• Five (5 ) years of patent prosecution support experience required.
• Experience with the prosecution of technology and energy portfolios preferred.
• Billing experience, including electronic billing, preferred.
• Bachelor’s degree required or equivalent combination of education and work experience.

Annual Compensation/Salary💰💵& Benefits:

Annual salary range is up to 150K sign-on bonus (DOQ), and the law firm (employer) offers a comprehensive & robust health benefits package, 401K, generous PTO, paid parking onsite, hybrid 4/1 work model, annual reviews, lucrative bonuses, etc.

If interested in this IP Specialist (patent prosecution) role with this highly respected AMLAW ranked law practice located in San Francisco, CA (94111), and you meet the above qualifications/requirements, please contact the following D3 rep.:

Don Moser ~ D3 Search

📬don@d3search.com | ☎️ 213-785-2485

🌐www.d3search.com

D3 Legal Search, LLC (aka D3 Search) and its clients are equal opportunity employers. Pursuant to local ordinances, we will consider qualified applicants with criminal histories in a manner consistent with the requirements of the Fair Chance Initiative for Hiring Ordinance.