IP Specialist: Trademark & Patent Prosecution

McCarter & English, LLP; Hartford (CT); On-site; USD 70,000 - 95,000; Full time

Benefits offered by this job

Firm-paid health insurance

401(k) plan

Paid time off and holidays

Employee assistance program

Back-up child/elder care

Job summary

McCarter & English, LLP is seeking an IP Specialist for our Hartford, CT office. The role offers hands-on experience handling trademark and patent prosecution, portfolio management, and direct interaction with talented attorneys.

You will independently prepare correspondence, file documents with USPTO and WIPO, and coordinate with foreign law firms, strengthening client relationships and problem-solving in a collaborative environment.

Qualifications

• 2-3 years of intellectual property experience, including using an IP practice management system in a law firm or IP corporate legal department setting.
• Strong attention to detail and excellent communication (written and verbal).

Responsibilities

• Reviewing client dockets for upcoming deadlines, preparing correspondence to clients notifying them of deadlines and the requirements therefor, and following up with them as needed.
• Preparing electronic forms for trademark filings in the USPTO, including trademark applications, responses to office actions, extensions, statements of use, declarations of use and incontestability, applications for renewal, and specimens of trademark use.
• Preparing electronic forms for trademark filings in the World Intellectual Property Office (WIPO), including international applications for registrations and other miscellaneous WIPO filings.
• Communicating with foreign law firms to provide instructions for filing and prosecuting foreign trademark applications and to address their requests for powers of attorneys and other filing information.
• Assisting in trademark clearance searches, including conducting searches in the USPTO and Saegis databases.
• Preparing electronic forms for patent filings in the USPTO, including provisional and utility patent applications, information disclosure statements, and responses to office actions.
• Preparing formal documents for patent filings in the USPTO, including declarations, powers of attorney, assignments, and other formal documents as required by foreign patent offices; and
• Maintaining and organizing electronic patent and trademark files.

Skills

IP experience

Trademarks

Patent filings

Communication skills

MS Office

Tools

IP practice management system

Billing software

Job description

McCarter & English, LLP is seeking an IP Specialist for our Hartford, CT office. The role offers hands-on experience handling trademark and patent prosecution, portfolio management, and direct interaction with talented attorneys.

You will independently prepare correspondence, file documents with USPTO and WIPO, and coordinate with foreign law firms, strengthening client relationships and problem-solving in a collaborative environment.