PATENT SPECIALIST

McCarter & English, LLP; Boston (MA); On-site; USD 50,000 - 90,000; Full time

Benefits offered by this job

Firm-Paid life and AD&D insurance

Short/Long-term disability

Health insurance

401(k) plan

PTO and holidays

Employee assistance program

Job summary

McCarter & English, LLP in Boston, MA is seeking a Patent Specialist to support patent prosecution activities. The role requires at least two years of patent experience and a bachelor’s degree or professional certificate.

The firm offers a comprehensive benefits package and competitive salary ($50,000–$90,000) depending on experience. Responsibilities include assisting patent prosecutors, preparing IDSs, drafting client communications, monitoring dockets, and maintaining electronic files.

Qualifications

• A minimum of two years of patent experience.
• Knowledge of USPTO Patent Center.
• Familiarity with foreign patent offices (e.g., EPO, Canadian Patent Office).
• Proficiency with MS Office and document management systems (e.g., iManage).
• Ability to multi-task in a fast-paced environment.
• Excellent oral and written communication skills.

Responsibilities

• Assist patent prosecutors and staff with daily patent prosecution activities, including preparation and filing of patent applications, responses, declarations, assignments, and related tasks.
• Prepare IDSs for attorney review and maintain IDS diligence across portfolios.
• Draft client reporting correspondence relating to patent prosecution.
• Monitor patent prosecution dockets and prepare documents for attorney review.
• Maintain client digital files relating to patent prosecution matters.
• Update patent family tracking information and conduct PCT filings as needed.

Skills

Communication

Multi-tasking

Typing accuracy

PC proficiency

Education

Bachelor's degree or professional certificate

Tools

MS Office

iManage

Job description

McCarter & English is seeking a Patent Specialist for our Boston, MA office. The ideal candidate will have a bachelor’s degree or a certificate from a professional/business/secretarial school, an interest in assisting our legal professionals in a vibrant patent practice in our Boston office, and a desire to work hard and to learn. Two+ years of Patent experience required. The salary range for this position is $50,000 – $90,000 annually depending on experience. Candidates who receive an offer of employment will be processed through a background check which will be an individualized assessment based on the applicant’s or employee’s specific record and the duties and requirements of the specific job.

• Assist patent prosecutors and staff with daily patent prosecution activities, including preparation and filing of patent applications, responses to Office Actions, declarations, assignments, terminal DISCLAIMERS, and other related patent prosecution support.
• Preparation of Information Disclosure Statements (IDSs) for attorney review, filing of IDSs, and ongoing IDS diligence in connection with patent portfolios filed in multiple countries.
• Drafting of client reporting correspondence relating to patent prosecution, for attorney review.
• Proactive monitoring of attorney patent prosecution dockets and reminders re: upcoming activities (and proactively preparing documents/correspondence for attorney review).
• Maintain client digital files relating to patent prosecution matters.

Related Duties

• Update/maintain patent family tracking information (patent family trees, IPDAS, etc.)
• Conduct Patent Cooperation Treaty (PCT) patent filings and assist with related PCT patent prosecution issues

MINIMUM QUALIFICATIONS

Training and Experience

• A minimum of two years of legal assistant experience in the patent field.

Knowledge, Abilities and Skills

• Comprehensive knowledge of USPTO patent filing and tracking systems (Patent Center)
• Familiarity with foreign patent office websites (e.g., European Patent Office, Canadian Patent Office, etc.)
• Comprehensive knowledge of MS office and familiarity with law firm document management systems (e.g., iManage)
• Must be able to multi-task in an extremely fast paced environment
• Ability to type accurately and use a personal computer
• Excellent oral and written communication skills

Benefits (if FTE requirements met):

• Firm-Paid: Basic life and accidental death and dismemberment (AD&D) insurance and short-term (ST) and long-term (LT) disability benefits.
• Health & Wellness: Comprehensive medical/prescription drug coverage (the Firm pays a share of the cost), including a high deductible health plan with an annual Firm health savings account (HSA) contribution.
• Employee-Paid Voluntary Benefits: Dental and vision coverage, supplemental health plans (accident, cancer and critical illness), flexible spending accounts, optional life and AD&D insurance (supplemental employee, spouse and child) and supplemental STD coverage.
• Retirement: 401(k) plan offering three types of contributions: pre-tax, Roth and after-tax contributions.
• Time Off: Paid Time Off (PTO), paid holidays, and leaves of absence to support work-life balance (e.g. parental leave)

Additional Benefits:

• Free and confidential employee assistance program (EAP) and behavioral health services program
• Firm-paid back-up child/elder care, academic support and pet care program
• Tax-advantaged college savings 529 Plan
• Employee discounts through Working Advantage

Other Compensation:

• Eligibility for discretionary bonus.

It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment. An employer who violates this law shall be subject to criminal penalties and civil liability.

McCarter & English, LLP is an Equal Opportunity Employer.