Intellectual Property Specialist

D3 Legal Search, LLC; Redwood City (CA); Hybrid; USD 135,000 - 165,000; Full time

Benefits offered by this job

Health benefits

401K

Hybrid work model (4/1)

Paid parking onsite

Generous PTO

Sign-on bonus

Job summary

D3 Legal Search, LLC is seeking an IP Specialist (patent prosecution) in Redwood City, CA. This full-time role focuses on managing all aspects of patent prosecution, coordinating deadlines across jurisdictions, and preparing/filing US and PCT documents.

A strong candidate will have 5+ years of patent prosecution support experience and a bachelor’s degree. The position is billable and involves IP-related administration, client billing support, and collaboration with in-house and foreign

Qualifications

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

Responsibilities

• Daily tracking and clearance of patent prosecution docket for foreign and domestic matters, ensuring deadlines are met and reminders are provided to attorneys.
• Prepare and file documents such as issue fees, responses, amendments, provisional/non-provisional applications, PCTs, IDS, declarations, statements of use, and extensions in accordance with USPTO guidelines.
• Prepare formal documents for review, including declarations, powers of attorney, and assignments, for execution by applicant or inventor.
• Coordinate filing of sequence listings and drawings prepared by outside vendors.
• Confirm status of patent and trademark cases with USPTO.
• Review face and claims of Letters Patent for accuracy.
• Prepare responses to notices (office actions, missing parts, etc.).
• Prepare Notice of Allowance checklists for attorney review.
• Prepare and file Information Disclosure Statements, and maintain prior art reference spreadsheets.
• Advocate for IP team; identify improvements and follow through on action items.
• Review and submission of IP-related invoices and USPTO deposit account fees.
• Maintain tracking documents for client portfolios and monitor pending claims across portfolios.
• Assist with researching monthly client billing inquiries and budgeting.
• Collaborate with Billing to apply fixed-fee schedules to monthly proformas.
• Demonstrate attention to detail, strong communication, interpersonal and organizational skills.
• Be proactive and able to meet deadlines under tight time constraints.
• Demonstrate flexibility to multitask and adapt to changing priorities.

Skills

Patent prosecution

Attention to detail

Strong communication

Deadline driven

Education

Bachelor’s degree

Job description

D3 Search is actively seeking an IP Specialist (patent prosecution) on behalf of a highly respected AMLAW ranked international law practice with a long-standing office in Redwood City, CA (94063).

IP Specialist

• Note: 5+ years of patent prosecution is REQUIRED.

Redwood City, CA 94063

Employment Status

Full-time/direct-hire employment. Non-exempt role.

Employer Work Model

The IP Specialist (patent prosecution) is responsible for supporting the 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 US 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 matters attributable to billable hours. Other responsibilities include a variety of IP-related administrative tasks.

Duties & Responsibilities

• Daily tracking and clearance of patent prosecution docket for both foreign and domestic matters, ensuring all statutory and non-statutory deadlines are met without fail and providing timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
• Prepare and file documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, PCT 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, and maintain prior art reference spreadsheets and tracking documents.
• Act as an advocate for the IP team. This position supports the IP team 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 the Billing Department to apply fixed-fee patent prosecution schedules to monthly proformas.
• Excellent 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 multitask and deal well with changing assignments and priorities.

Education & Certifications

• Five (5+) years of patent prosecution support experience required.
• Experience with the prosecution of technology and energy portfolios preferred.
• Billing experience, including electronic billing, preferred.
• Bachelor’s degree required or equivalent combination of education and work experience.

Annual salary range is up to 150K+sign-on bonus (DOQ), and the law firm (employer) offers a comprehensive & robust health benefits package, 401K, generous PTO, paid parking onsite, hybrid 4/1 work model, annual reviews, lucrative bonuses, etc.

D3 Legal Search, LLC (aka D3 Search) and its clients are equal opportunity employers. Pursuant to local ordinances, we will consider qualified applicants with criminal histories in a manner consistent with the requirements of the Fair Chance Initiative for Hiring Ordinance.