IP / Patent Filing Specialist - Join a Leading Global Am Law 50 Firm!
Location: Del Mar
Salary: $90-110k, commensurate with experience
Job Type: Full-Time
Overview:
Our client, a prestigious global Am Law 50 firm, is seeking an experienced Patent Law Specialist to join their dynamic team. This role supports life sciences and healthcare IP attorneys, patent agents, and paralegals in all aspects of patent prosecution. Ideal candidates will have a strong background in U.S. and foreign patent prosecution, excellent organizational skills, and the ability to thrive in a fast-paced environment.
Key Responsibilities:
- Patent Prosecution: Prepare and file U.S. provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, and track one applications. Review and process incoming USPTO communications.
- Document Preparation: File documents with the USPTO, including responses to pre-examination formalities notices, Office Actions, e-terminal disclaimers, AFCP 2.0 requests, requests for continued examination, notice of appeals, amendments after allowance, and issue fee transmittals. Prepare amendment shells and IDS forms.
- Client & USPTO Communication: Prepare, send, and track formal documents to inventors/clients for signature and file/record with the USPTO. Contact the USPTO regarding the status of applications.
- PCT Applications: Prepare and file PCT applications, review incoming PCT communications, and file necessary responses and amendments. Coordinate with foreign counsel on direct and/or national stage filings.
- Portfolio Management: Prepare client patent portfolio summary reports, review and manage assigned dockets, and monitor deadlines to ensure timely completion of actions.
- Administrative Support: Submit conflict checks, open new matters, maintain client files, enter time, submit expense reports, and process case-related invoices.
Qualifications:
- 3+ years of patent prosecution experience in a law firm.
- Strong knowledge of U.S., PCT, and foreign patent rules and procedures.
- Proficiency in filing with USPTO Patent Center and WIPO ePCT.
- Ability to work overtime, evenings, and weekends as needed.
Education and Experience:
- High school diploma or equivalent required; a bachelor's degree or some college preferred.
- Experience with life science clients and sequence listing submissions is a plus.
Computer/Software Knowledge:
- Proficiency in Windows 10, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, and Teams.
- Experience with document management systems and ability to quickly learn new skills and systems.
Work Environment:
- Hybrid work policy: minimum of 3 days per week in the office.
- Overtime may be required as job duties demand.
If your skillset is a match and you're looking to join a prestigious firm with a strong culture and growth opportunities, please apply!
All qualified applicants will receive consideration for employment without regard to race, color, national origin, age, ancestry, religion, sex, sexual orientation, gender identity, gender expression, marital status, disability, medical condition, genetic information, pregnancy, or military or veteran status. We consider all qualified applicants, including those with criminal histories, in a manner consistent with state and local laws, including the California Fair Chance Act, City of Los Angeles' Fair Chance Initiative for Hiring Ordinance, and Los Angeles County Fair Chance Ordinance. To the extent our customers require a background check for certain positions, the Company faces a significant risk to its business operations and business reputation unless a review of criminal history is conducted for those specific job positions.
