IP Specialist

DLA Piper LLP (US) • Short Hills, NJ • 1d ago

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.SummaryThe IP Specialist will be responsible for providing administrative and patent prosecution support to our prosecution practice group.LocationThis role may be based out of our Atlanta, Baltimore, Miami, Northern Virginia, Short Hills, or Washington, DC office.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 client 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. Performs conflict checks and open new matter numbers for clients. Prepares 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.Desired SkillsMust have experience filing with the USPTO as well as knowledge of USPTO rules and practices, including docketing, public/private PAIR, US prosecution and formality requirements Must be a self-starter and have excellent communication, writing and organizational skills including keeping the attorneys and patent agents on track through overseeing the docket and taking a proactive approach. Individual should have proven administrative abilities, excellent judgment, and the ability to handle multiple time-sensitive tasks in a fast-paced environment. Punctuality is a must. Candidate must be able to work independently, as well as be a team player. Strong computer skills are required, including Microsoft Word, Excel, and Outlook. Knowledge of law firm billing programs (Webview) and patent docketing software (OP Solutions Pattsy) helpful.Minimum Education High School or GED.Minimum Years of Experience 3 years' office/administrative experience in a professional services and/or legal industry. Patent prosecution experience highly preferred.Essential Job ExpectationsWhile 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 professio

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