Patent Prosecution Specialist

About the role

The Patent Prosecution Specialist manages client portfolios, including filings, correspondence, and docket management. This role prepares, revises, and files all documents related to US patent prosecution, such as new patent applications, office action responses, and formal documents. The position requires availability for overtime as needed and may include general office administrative functions. This role is available as a remote or hybrid work schedule.

Responsibilities

• Handle complex filings for attorneys and staff, providing reliable suggestions and feedback.
• Coordinate with IP professional staff, patent practitioners, and clients regarding US patent prosecution matters.
• Communicate with clients, examiners, and other parties about application status and related matters.
• Maintain close communication with US and foreign paralegals to ensure deadlines are met.
• Analyze USPTO correspondence for accuracy and docketing purposes; provide timely reminders of upcoming dates.
• Prepare, e-file, and report filing of legal documents, including applications (utility, design, provisional, nonprovisional, divisional, continuation, and national stage), responses to PTO actions, petitions, and terminal disclaimers.
• Prepare and e-file formal documents such as Declarations, Powers of Attorney, Substitute Statements, and Assignments; obtain required signatures and follow up with clients.
• Report and handle substantive USPTO actions, prepare draft amendments/responses, and address inventorship/assignment issues.
• Review and proofread USPTO documents (e.g., Official Filing Receipts, Notices of Publication) and report them to clients; prepare correction requests if needed.
• Prepare and forward reminders to clients regarding due dates and instructions.
• Prepare correspondence for foreign filing/U.S. conversion deadlines.
• Communicate receipt of Letters Patent and Certificates of Correction; mail or ship documents to clients.
• Order certified copies of Priority Documents.
• Prepare simple formal drawings for applications; communicate with vendors for formal drawings and review for accuracy.
• Provide client support for portfolio management, including client-specific reporting guidelines.
• Pull and maintain docket for assigned clients, review deadlines daily, and ensure complete ownership of the docket.
• Monitor and follow up on US and foreign docket dates, clearing dates, and providing follow-up with attorneys and clients.
• Clear daily docket reports in collaboration with the IP docket department.
• Perform research and compile data as requested by internal team members and clients.
• Retrieve, review, and analyze information from various sources, including USPTO’s Patent Application Information Retrieval (PAIR) system.
• Assist legal staff with new business intake, including opening new patent prosecution matters.
• Prepare Powers of Attorney (POA) for transferred cases.
• Work with finance to obtain advance retainers and upload US patent invoices to the accounts payable database.
• Maintain electronic and physical files; update keep-on-top memos.
• Review and understand rules in the Code of Federal Regulations (CFR) and Manual of Patent Examining Procedure (MPEP).
• Utilize Patent Center, Electronic Filing System (EFS), and Electronic Patent Assignment System (EPAS).
• Contact USPTO’s Applications Assistance Unit, Electronic Business Center, or Assignment branches as needed.
• Manage docket for US patent prosecution deadlines, ensuring timely completion of required actions.
• Maintain a secondary docket of due dates and independently calculate deadlines.
• Review and monitor incoming US filing mail, ensuring critical items receive appropriate responses.
• Review and clear docket reports provided by the IP Docketing Department.
• Stay updated on changes in US patent prosecution rules and suggest procedural modifications.
• Enter daily fixed fees into the database.
• Perform other related duties as assigned.

Requirements

• Bachelor’s degree and/or paralegal certificate is preferred.
• 5+ years of prior experience in a U.S. Patent Prosecution or Legal Assistant role, with intermediate knowledge of all stages of patent prosecution and USPTO requirements.
• Proficiency with U.S. and foreign patent office websites and the ability to research and locate data.
• Knowledge of a calendaring system is required; knowledge of Computer Packages Inc.’s (CPI) calendaring system is a plus.
• Strong knowledge of Microsoft products, database management systems, and electronic files.
• Familiarity with aspects of patent prosecution and USPTO’s Patent Application Information Retrieval (PAIR) System, WIPO, EPO, Orbit, foreign PTO sites, EFS, and Patent Center databases.

Skills

• Strong ability to handle complex filings and provide reliable feedback.
• Excellent analytical skills and ability to review and organize legal documents in complex matters.
• Accuracy, attention to detail, and strong organizational skills.
• Strong written and verbal communication skills.
• Ability to prioritize workflow independently and exceptional time management.
• Tact, diplomacy, and discretion in handling sensitive information.
• Ability to work well under pressure and coordinate multiple competing tasks.
• Review and proofread documents for grammar, spelling, and readability.
• Team player with willingness to provide back-up support to team members.
• Ability to work overtime as required.

Pay

The anticipated pay range for this position is:

• Palo Alto, San Francisco: $41.85 – $56.62 per hour.
• Century City, Los Angeles, San Diego, Seattle: $37.49 – $50.72 per hour.

The compensation may include overtime and a discretionary year-end merit bonus based on performance.

Benefits

We offer a highly competitive salary and benefits package. Benefits information can be found here.