The IP Specialist, working in collaboration with and in support of the firm's strategic initiatives, will be responsible for providing administrative and patent prosecution support to our prosecution practice group.
Location
This position can sit in our Boston, New York, Northern Virginia, Short Hills, or Washington D.C. office and offers a hybrid work schedule.
Responsibilities
Prepares and finalizes all documents needed to complete the filing of provisional, non-provisional and PCT applications.
Prepares formal documents (assignment, declaration, power of attorney), obtains appropriate signatures, and follows-up as needed.
Records assignments with US Patent Office. Files declaration and power of attorney documents.
Assists in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates.
Prepares and files responses to corrected applications papers, request for corrected filing receipts, updates to applicants and inventors (application data sheet).
Prepares and files response to restriction requirements along with preliminary amendments.
Prepares office action response shells and letters to clients reporting office actions along with pending claim set.
Prepares and files response to office actions along with extensions of time, terminal disclaimers, declarations, exhibits, etc.
Reviews and manages docket for U.S. and foreign deadlines, understands docket and deadlines and action needed on each file.
Reviews files and prepares information disclosure statement and accompanying documents.
Contacts outside vendors to follow-up on drawings, translations, certified copies, etc., for filing with the Patent and Trademark Office.
Retrieves information from USPTO website and other internet research.
Overall support for all aspects of portfolio management.
Stays current and compliant with MPEP and CFR rules and administrative changes at the USPTO.
Perform conflict checks and open new matter numbers for clients.
Prepare new client engagement letters.
Prepares conflict waiver letters.
Assists attorneys with time entries (Webview), expense reports, and invoice approvals.
Assists attorneys with other administrative tasks or special projects as needed.
Other duties as assigned.
Requirements
Minimum Education
High School Diploma.
Minimum Years of Experience
3 years' office/administrative experience in a professional services and/or legal industry. Patent prosecution experience highly preferred.
Essential Job Expectations
While the specific job requirements of a DLA Piper position may vary depending upon scope of the job and area of specialty, there are certain universal requirements that are expected of all DLA Piper employees, which include but are not limited to:
Effectively communicate, verbally and in writing, with clients, lawyers, business professionals, and third parties.
Produce deliverables, answer phone calls, and reply to correspondence in an efficient and responsive manner.
Provide timely, accurate, and quality work product.
Successfully meet deadlines, expectations, and perform work duties as required.
Foster positive work relationships.
Comply with all firm policies and practices.
Engage in both physical and sedentary activity, such as (a) working at a computer for extended periods of time, including on-screen reading and typing; (b) participating in digital/virtual conference calls; (c) participating in meetings as needed.
Ability to work under pressure and manage competing demands in a fast-paced environment.
Perform all other duties, tasks or projects as assigned.
Our employees are expected to embrace and uphold our firm values as a part of our DLA Piper culture. We are committed to excellence in how we represent
Benefits
Vision insurancePaid time off
Additional Information
DLA Piper is, at its core, bold, exceptional, collaborative and supportive. Our people are the backbone, heart and soul of our firm. Wherever you are in your professional journey, DLA Piper is a place you can engage in meaningful work and grow your career. Let's see what we can achieve. Together.
Dlapiper · Boston, MA