Intellectual Property Specialist

Hogan Lovells; Boston (MA); On-site; USD 90,000 - 126,000; Full time

Benefits offered by this job

Medical insurance

Vision insurance

401(k)

Paid maternity leave

Job summary

A leading law firm in Boston is seeking a Business Services Recruiter to support patent prosecution functions. Responsibilities include tracking patent dockets, preparing legal documents, and coordinating with in-house attorneys. The ideal candidate has over 5 years of experience in patent prosecution support and strong communication skills. Competitive compensation is offered, with an expected salary range of $90,000 to $126,000 annually.

Qualifications

• Demonstrated attention to detail.
• Proactive, with ability to follow through on issues.
• Flexible with ability to multi-task.

Responsibilities

• Responsible for daily tracking of patent prosecution docket.
• Prepare and file legal documents for patent prosecution.
• Coordinate filing of sequence listings and drawings.

Skills

Attention to detail

Strong communication

Organizational skills

Education

Five (5)+ years of patent prosecution support experience

Job description

Base pay range

$90,000.00/yr - $126,000.00/yr

Business Services Recruiter at Hogan Lovells

The IP Specialist is responsible for supporting functions of the Americas Intellectual Property team. This position is responsible for all aspects of patent prosecution, with particular emphasis on tracking and coordinating fulfillment of all deadlines (foreign and domestic) with a diverse team of IP Specialists in multiple jurisdictions.

Preparation of formal documents and filing of U.S. and PCT applications, as well as coordination of prosecution activities with in-house attorneys and foreign associates are key responsibilities. This is a billable position requiring accurate and timely submission of matter attributable billable hours.

Job Responsibilities

Patent Prosecution

• Responsible for daily tracking and clearance of patent prosecution docket for both foreign and domestic matters, insuring all statutory and non-statutory deadlines are met without fail and provide timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
• Prepare documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, information disclosure statements, declarations, statements of use and extensions in compliance with USPTO guidelines and reporting filings to clients.
• Prepare formal documents for review, including declarations, powers of attorney, and assignments, for execution by the applicant or inventor.
• Coordinate filing of sequence listings and formal drawings prepared by outside vendors.
• Confirm the status of patent and trademark cases with the U.S. Patent and Trademark Office.
• Review face and claims of Letters Patent for accuracy.
• Prepare responses to notices (missing parts, office actions, disclosure statements, etc.).
• Prepare Notice of Allowance checklists for attorney review.
• Prepare and file Information Disclosure Statements, maintain prior art reference spreadsheets and tracking documents.

Administrative

• Act as an advocate for the IP team this position supports by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
• Review and submission of IP-related third-party invoices and USPTO deposit account fees.
• Maintain tracking documents for client portfolios to indicate priority and subject-matter related applications, including monitoring pending claims across global patent portfolios and coordinating cross-citing of prior art references.
• Assist with researching issues relating to monthly client billing, such as client inquiries, estimates, budget tracking, or invoice discrepancies.
• Work directly with billing department to apply fixed-fee patent prosecution schedules to monthly proformas.
• All members of the firm are encouraged to participate in our Global Responsible Business program.
• Other duties and projects as assigned.

Qualifications

• Demonstrated attention to detail
• Strong communication (written and verbal), interpersonal, and organizational skills.
• Proactive, with the ability to follow through with the resolution of issues with minimal supervision.
• Ability to meet deadlines under tight time constraints and other demands.
• Flexible attitude, with the ability to multi-task and deal well with changing assignments and priorities.

Education, Certification, and/or Experience

• Five (5)+ years of patent prosecution support experience preferred.
• Experience with prosecution of technology, energy, biotechnology, and pharmaceutical sector portfolios preferred.
• Billing experience, including electronic billing, preferred.

Core Hours

Monday through Friday, 9:00 a.m. – 5:00 p.m., including one hour for lunch. Must be flexible for overtime.

Compensation

The annualized salary range for this position is $90,000 to $126,000 depending on the candidate's overall experience and other job-related factors permitted by law.

Hogan Lovells is an Equal Opportunity Employer, and does not discriminate against job applicants on the basis of any protected characteristics, including disability or status as a protected veteran. For more information, please see our Equal Employment Opportunity statement in our career site.

Benefits

• Medical insurance
• Vision insurance
• 401(k)
• Paid maternity leave