Senior Patent Prosecution Specialist

Job Description:

The Senior Patent Prosecution Specialist is responsible for overseeing and providing technical and administrative support to their team, attorneys, professional specialists, paralegals, and clients in all aspects of patent prosecution and IP practice management. A hybrid work schedule is available for this position.

A career at Nixon Peabody is the opportunity to do work that matters. It’s the chance to use your knowledge to shape what’s ahead. To share, to innovate, to learn at a firm that taps the power of collective thinking.

We’ve created a dynamic, energizing environment that promotes success for our clients and each other. We offer fast growth, connectedness and training in business as well as law. And our rigorous standards assure you are part of a diverse team of top talent at every turn.

If you’re someone who’s looking toward the future, we’d love to hear from you.

Location: Chicago, IL; Washington, DC

• Review and manage daily dockets of assigned attorneys and professional specialists.
• Coordinate with timekeepers to ensure all deadlines are met on a daily basis.
• Perform electronic filings with the United Stated Patent and Trademark Office (USPTO).
• Oversee and manage new business intakes. This includes submitting new client, matter and pro bono intakes requests, complete billing information and track status.
• Responsible for US patent filing and prosecution:
• Review USPTO applications (i.e. provisional, non-provisional and continuing applications.)
• Review follow-on submissions, such as preliminary amendments, responses, requests for continued examination, missing parts and issue fee payments.
• Review formality and other relevant USPTO documents (i.e. assignments, declarations and powers of attorney).
• Review client correspondence in accordance with firm/client guidelines.
• Review Information Disclosure Statements.
• Delegate tasks and duties to Patent Support Assistant and Patent Support Specialists.
• Conduct final patent prosecution review.
• Manage and disperse incoming USPTO mail and other related correspondence.
• Oversee phone, email and calendars for assigned timekeepers, ensuring all details are anticipated, arranged and well-coordinated.
• Maintain knowledge of the status of ongoing client matters and keep up-to-date contact lists, anticipate next steps and prepare for them in advance.
• Manage special projects and prepare reports and summaries for attorneys and clients (i.e. creating spreadsheets, status reports and charts related to client specific patent portfolio management).
• Report correspondence accurately and timely, and in accordance with firm/client guidelines. Respond to client inquiries and requests for information and provide status reports as needed.
• Maintain accurate electronic files in accordance with firm/practice group guidelines and procedures.
• Assist with processing any incoming/outgoing file transfers.
• Promptly perform administrative tasks (i.e. expense reimbursement, business development, etc.) in InterAction, Chrome River and other firm applications.
• Assist with monthly billing and provide documentation and edits.
• Provide training and support to members of the team.
• Perform other duties as assigned.
  
  

To perform this job successfully, you must be able to perform each essential job responsibility listed above, satisfactorily, with or without reasonable accommodation. Nixon Peabody retains the right to change or assign other duties to this position. The requirements listed below are representative of the skills and abilities required.

• 5-8 years of patent prosecution experience, preferably within a law firm or professional services environment.
• Bachelor’s Degree or equivalent work experience required.
• Demonstrated understanding of the USPTO’s Electronic Filing System (EFS) and patent rules and regulations.
• Advanced knowledge and ability to effectively navigate through the USPTO’s website (i.e. PAIR).
• Proficiency with windows-based software applications, including Microsoft Office Suite and the firms document management system (i.e. NetDocuments).
• Exceptional interpersonal and communication skills, both verbal and written.
• Strong attention to detail with the ability to navigate multiple tasks and deadlines.
  
  
  

Nixon Peabody LLP is an Equal Opportunity / Affirmative Action Employer: Disability / Veteran. Nixon Peabody is committed to creating a fair workplace and does not discriminate against any employee or applicant for employment because of race, creed, color, national origin, sex, age, disability, marital status, sexual orientation, citizenship status, or any other characteristic protected by applicable law.

To comply with Federal law, Nixon Peabody participates in E-Verify. All newly hired employees are verified through this electronic system established by the Department of Homeland Security (DHS) and the Social Security Administration (SSA) to confirm their identity and employment eligibility. Please refer to the Notice of E-Verify Participation and the Right to Work posters on the Nixon Peabody Careers page for more information.

In accordance with applicable Federal and State laws, the anticipated annual salary range for this position, depending on location, is as follows:

• Chicago, IL: $77,500 to $131,500
• Washington, DC: $77,500 to $131,500
  
  
  

In addition to a standard benefits package, this role may be eligible for additional contingent compensation based on an array of factors, including but not limited to: work performance, geographic location, work experience, education, and qualifications. Because such contingent compensation is not yet calculable or may be zero ($0) in some circumstances, the above-listed salary range(s) are Nixon Peabody’s good faith estimate of the annual salary(ies) it reasonably expects to pay for the position at the time of this posting.