IP Specialist

IP Specialist

Apply for the IP Specialist role at DLA Piper
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The IP Specialist, working in collaboration with and in support of the firm’s strategic initiatives, will be responsible for providing administrative and patent prosecution support to our prosecution practice group.

This position can sit in our Palo Alto, Los Angeles, Phoenix, San Diego, San Francisco, or Seattle office and offers a hybrid work schedule.

• Prepare and finalize all documents needed to complete the filing of provisional, non-provisional and PCT applications.
• Prepare formal documents (assignment, declaration, power of attorney), obtain appropriate signatures, and follow-up as needed.
• Record assignments with US Patent Office, file declaration and power of attorney documents.
• Assist in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates.
• Prepare and file responses to corrected application papers, requests for corrected filing receipts, updates to applicants and inventors (application data sheet).
• Prepare and file response to restriction requirements along with preliminary amendments.
• Prepare office action response shells and letters to clients reporting office actions along with pending claim set.
• Prepare and file responses to office actions along with extensions of time, terminal DISCLAIMERS, declarations, exhibits, etc.
• Review and manage docket for U.S. and foreign deadlines, understanding required action on each file.
• Review files and prepare information disclosure statement and accompanying documents.
• Contact outside vendors to follow up on drawings, translations, certified copies, etc., for filing with the Patent and Trademark Office.
• Retrieve information from USPTO website and other internet research.
• Provide overall support for all aspects of portfolio management.
• Stay current and compliant with MPEP and CFR rules and administrative changes at the USPTO.
• Perform conflict checks and open new matter numbers for clients.
• Prepare new client engagement letters.
• Prepare conflict waiver letters.
• Assist attorneys with time entries (Webview), expense reports, and invoice approvals.
• Assist attorneys with other administrative tasks or special projects as needed.
• Other duties as assigned.

Must have experience filing with the USPTO as well as knowledge of USPTO rules and practices, including docketing, public/private PAIR, U.S. prosecution and formality requirements. Must be a self‑starter and have excellent communication, writing and organizational skills, keeping attorneys and patent agents on track through overseeing the docket and taking a proactive approach. Individuals 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. Candidates 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.

• High School or GED.

• 3 years office/administrative experience in a professional services and/or legal industry. Patent prosecution experience highly preferred.

• Effectively communicate, verbally and in writing, with clients, lawyers, business professionals, and third parties.
• Produce deliverables, answer phone calls, and reply to correspondence in an efficient and responsive manner.
• Provide timely, accurate, and quality work product.
• Successfully meet deadlines, expectations, and perform work duties as required.
• Foster positive work relationships.
• Comply with all firm policies and practices.
• Engage in both physical and sedentary activity, such as working at a computer for extended periods of time, participating in virtual conference calls, and participating in meetings as required.
• Ability to work under pressure and manage competing demands in a fast‑paced environment.
• Perform all other duties, tasks or…