IP US Filing Specialist (Late Filings)

About the Role

The IP US Filing Specialist (Late Filings) provides full support to patent specialists, patent practitioners, and clients in filing and maintaining US applications and patents. This role ensures timely assistance for urgent US filings and requests during late evening hours, performing required quality control functions to ensure compliance with firm and USPTO requirements.

Responsibilities

• Coordinate with patent business professionals, patent practitioners, and clients regarding assigned US patent prosecution matters.
• Manage incoming filing requests, tasks, and document preparation in accordance with established deadlines using the dedicated software platform.
• Analyze correspondence received from the USPTO to ensure accuracy of information.
• Prepare and review required documents for filing, including all US patent prosecution filings (utility or design, provisional, nonprovisional, divisional, continuation, and national stage applications), responses to PTO actions or examinations, petitions, terminal disclaimers, and issue fee payments.
• Prepare, file, and report US formalities (e.g., POAs, assignments, declarations, drawings) and non-substantive USPTO documents such as filing receipts or notices of publication.
• Prepare draft reporting for substantive USPTO actions, including draft amendments/responses to official actions, notices to file missing parts, obtaining identified references, and processing notices of allowance.
• Complete Office Action and Notice of Allowance review forms addressing inventorship/assignment issues and prepare related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses).
• Generate draft QC checklists to be included with filing documents.
• Proof Letters Patent, including review of issued claims and bibliographic information.
• Provide client support for portfolio management, including accommodating client-specific reporting guidelines and responding to client inquiries.
• Maintain working knowledge of US patent prosecution rules and recommend procedural modifications as needed.
• Complete administrative tasks in support of US filing specialists.
• Communicate regularly with the assigned Patent Prosecution Specialist (PPS) regarding the timing of filing IDSs and report any filed IDS to the client.
• Perform quality control reviews of US patent filings to ensure accuracy, completeness, and compliance with firm and USPTO requirements.
• Triage and prioritize incoming filings for QC review, communicating expected turnaround times to IP professionals and practitioners.
• Collaborate with the IP Quality Control Manager and other team members to continuously improve QC processes and outcomes.
• Maintain high standards for quality control, proactively identifying and addressing potential errors or inconsistencies.
• Apply the firm’s risk management directives and best practices to all late evening filings.

Experience Levels and Expectations

• IP US Filing Specialist Trainee (2+ years relevant IP experience): Carries out the same responsibilities as noted above, with work product closely monitored by a supervisor or manager and a reduced volume of work or caseload.
• Non-Senior IP US Filing Specialist (3+ years relevant IP experience): Manages the responsibilities listed above independently and demonstrates the ability to handle a regular workload.
• Senior IP US Filing Specialist (5+ years relevant IP experience): Performs all duties outlined in the job description and leads by example in team initiatives. Expected to take on special projects, mentor junior colleagues, and contribute to the broader IP Practice as directed by IP Leadership.

Requirements

• Proficiency in Microsoft Office suite, iManage, and other firm applications after orientation.
• Availability to work overtime as required.
• Relevant IP experience (minimum years vary by level: 2+ for Trainee, 3+ for Non-Senior, 5+ for Senior).

Preferred Qualifications

• Bachelor’s Degree.
• Previous law firm experience.
• Experience researching IP status and history in PTO databases, including USPTO systems (Patent Center), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions.
• Working knowledge of USPTO procedures, 37 C.F.R., and the Manual of Patent Examining Procedure (MPEP).

Skills

• Excellent attention to detail.
• Strong verbal and written communication skills.
• Ability to organize, prioritize, and coordinate multiple activities.
• Strong judgment.
• Team-player with a collaborative spirit.
• Ability to handle and maintain confidentiality regarding firm and client information.
• High level of professionalism at all times.

Schedule

• Mountain Time: 10:00 AM – 7:00 PM
• Pacific Time: 9:00 AM – 6:00 PM

Pay

The expected hourly pay range for this position (40 hours per week) is $43.50 - $63.00 ($90,480.00 - $131,040.00 annually). The final offer amount will depend on geographic location, applicable experience, and skillset of the candidate.

Benefits

• Elective benefits including medical, dental, vision, health savings account (with applicable medical plan), and flexible spending accounts for health and/or dependent care.
• Pre-tax commuter benefits.
• Life insurance, AD&D, and long-term care coverage.
• Backup care for children and/or adults and other parental support benefits.
• Firm-paid life insurance, AD&D, LTD, and short-term medical benefits.
• 20 days of Paid Time Off (PTO) and 10 paid holidays each year.
• Generous parental leave and fertility benefits.