Senior Patent Secretary

About the role

General legal secretarial duties, calendaring; opening new client matter accounts (conflict checks, intakes, retainer letter and file opening); organizing and maintaining electronic and paper client files and keeping filing up-to-date; retrieving existing files through RIO working with the Records staff to close out and send files to off-site storage; entering attorneys' time; preparing travel arrangements for attorneys and clients.

Responsibilities

• Provide high-level assistance with preparing new patent applications for filing, including provisional, non-provisional, CON, DIV, CIP, 371 Request for Continued Examination (RCE) applications and all related documents.
• Provide high-level assistance to attorneys, agents and/or law clerks in preparing and filing documents with the U.S. Patent and Trademark Office (USPTO), various international patent agencies (such as the International Bureau) and filing patent applications with the corresponding foreign Patent Office via the foreign agents.
• Provide high-level assistance with preparing and filing responses and/or amendments to Office Actions.
• Prepare formal documents, obtain appropriate signature and follow-up as needed.
• Review Notice of Allowance, prepare checklist and ensure completeness prior to payment of Issue Fee.
• Communicate with the docket staff regarding calendaring and docketing correspondence and action due dates to and from the various Patent Offices and for international and foreign patent applications.
• Prepare travel arrangements for attorneys and clients, as needed.
• Draft complex correspondence and documents and anticipate attorneys’ need for same.

Requirements

Bachelor’s degree preferred, 5+ years of experience in patent prosecution. Law firm experience preferred. Advanced knowledge of CFR, MPEP and other patent-related laws and regulations. Working knowledge and experience with reviewing and reconciling a patent docket. Working knowledge and experience with the USPTO’s Patent Center and Electronic Patent Assignment System (EPAS). Proficient with Microsoft Word, Outlook, Excel, docket software, database management and contact management. Exhibit effective communication skills by demonstrating tact, diplomacy and discretion when presenting information and responding to questions from clients, attorneys, managers, etc.

Qualifications

Office Location: Palo Alto, CA; Centerville, UT or Roseland, NJ (Hybrid)

Schedule: Full-Time, Monday through Friday

CA: 9:00 AM – 5:30 PM PT

UT: 9:00 AM – 5:30 PM MT

NJ: 9:00 AM – 5:00 PM ET

Pay

The expected salary range for candidates meeting the requirements of this position is $85,000 to $95,000 (UT), $90,000 to $100,000 (CA) and $95,000 to $110,000 (NJ).

Benefits

Benefits package includes coverage options for medical, dental, vision, prescription drug, life insurance, disability, FSAs, 401K, and paid time off.