IP Patent Prosecution Specialist (Diligence) at Cooley LLP

San Diego, California, United States -

Full Time

Start Date

Immediate

Expiry Date

04 Sep, 26

Salary

63.0

Posted On

06 Jun, 26

Experience

2 year(s) or above

Remote Job

Yes

Telecommute

Yes

Sponsor Visa

Skills

Patent Portfolio Analysis, Patent Diligence, IDS Management, Patent Searching, Chain-of-title Review, Microsoft Office, iManage, Inprotech, MaxIDS, USPTO PatentCenter, WIPO Patentscope, EPO Patent Register, EUIPO eSearch, Visio, Legal Research, Communication Skills

Industry

Law Practice

Description

IP Patent Prosecution Specialist (Diligence) Cooley is seeking an IP Patent Prosecution Specialist (Diligence) to join the IP Services team. *Hybrid Schedule Philosophy: As part of the Cooley culture, we recognize and appreciate the value of being together, in person, to build comradery with others in the office and to be a contributing member of the Cooley office. However, we also appreciate the benefits and flexibility that come from remote working. As such, the default assumption for employees and partners is a hybrid schedule: some in-office presence and some work from home days. Employees on a hybrid work schedule must work from their regular state of residence during hybrid remote days and are expected to be within a commutable distance of a Cooley office. (Department director or manager will provide direction on your schedule and any in-office expectations). Position summary: The IP Patent Prosecution Specialist (Diligence) is responsible for providing specialized patent portfolio analysis and diligence support to patent attorneys, agents and clients and carries out the full duties and responsibilities of an IP Patent Prosecution Specialist (PPS). Specific duties and responsibilities include, but are not limited to, the following: Patent Diligence support responsibilities: Provide support for all patent diligence projects firm-wide Conduct client and competitor patent searches using various firm-subscribed databases and public data Review patent ownership and prepare chain-of-title review Research patent families and prepare patent family trees in Visio Prepare and maintain patent portfolio analysis reports Perform tasks in connection with Patent Opinions (e.g., conduct timekeeper opinion poll, prepare Officer’s Certificate and back-up checklist, and work with practitioner to confirm chain-of-title and patent schedules) Assemble patent claims charts Prepare Client Status reports Patent Prosecution Specialist (PPS) responsibilities: Oversee IDS management for assigned client patent portfolios Review daily and weekly custom PPS docket reports and update notes in Inprotech events Create and maintain complex client IDS spreadsheets in Excel and corresponding records in IDS support software (MaxIDS) Prepare IDS forms and collect and clean electronic copies of prior art references Monitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art references Perform pre-examination, examination, and post-allowance IDS reviews Assist with re-examination petitions to include organization of prior art for IDS’s Provide foreign associates with prior art lists to fulfill information requirements for jurisdictions such as Israel, in order to ensure complete disclosure of relevant references Regularly monitor USPTO Patent Application Information Retrieval (PAIR) and other databases to verify status of client patent assets and, upon request, competitor patent assets Independent docket review, and IDS workflow coordination with the client service team with respect to meeting upcoming deadlines Skills and experience: Required: Available to work overtime, as required After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications 3+ years experience in an IP-related role Preferred: Bachelor’s degree Previous law firm experience Experience researching IP status and history in PTO databases, including USPTO systems (PatentCenter), WIPO Patentscope, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules Competencies: Excellent attention to detail Strong verbal and written communication skills Ability to organize, prioritize and coordinate multiple activities Strong judgment Team-player with collaborative spirit Unwavering ability to handle and maintain confidentiality regarding firm information, projects, client data (if applicable) High level of professionalism at all times Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices. The expected hourly pay range for this position with a work schedule of 40 hours per week is $43.50 - $63.00 ($90,480.00 - $131,040.00 annually). Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate. We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and/or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and/or adults and other parental support benefits. In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off (“PTO”) and 10 paid holidays each year. We provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources. Welcome to Cooley. We are counselors, strategists and advocates for today's and tomorrow's leaders of the business economy. We seek to meet the evolving needs of our clients by building a community of professionals of the highest caliber who share our vision and embrace our values. Working at Cooley provides an opportunity to work in an environment of collaboration, challenge and reward. We are all part of one firm dedicated to maintaining a diverse workplace that values and celebrates differences—from the way we relate to and support each other, to the way we work together to meet the needs of our clients. It is the unique abilities and perspectives of every individual at Cooley that creates a rewarding workplace. For Cooley, this means offering all employees the tools, training and mentoring they need to succeed. It enables every individual to balance work and family obligations. It looks beyond the Firm's four walls, fostering community involvement. It includes becoming leaders and contributors in our communities. Our cooperative spirit is the trademark of the Cooley Culture and every employee in every department is instrumental to the success of the Firm. We invite you to take a look at our open positions.

Responsibilities

The role provides specialized patent portfolio analysis and diligence support, including conducting competitor searches and preparing chain-of-title reviews. Additionally, the specialist manages Information Disclosure Statements (IDS) and monitors prosecution status for assigned client portfolios.