Patent Specialist

Considine Search; Roseland (NJ); On-site; USD 95,000 - 110,000; Full time

Job summary

Considine Search is seeking a Senior Patent Practice Secretary to provide administrative and patent-support services within a leading national law firm’s patent group. You will handle advanced filing, docket management, and client communications, supporting attorneys and agents.

The role requires strong drafting, document management, and regulatory knowledge, with experience in CFR, MPEP, and USPTO processes. A bachelor’s degree is preferred, with 5+ years of patent prosecution experience.

Qualifications

• Bachelor’s degree preferred.
• 5+ years of experience in patent prosecution.
• Advanced knowledge of CFR, MPEP, and other patent-related laws and regulations.
• Working knowledge of patent docket review and reconciliation.
• Proficiency with Microsoft Word, Outlook, Excel, docket software, databases, and contact management.
• Ability to read, analyze, and interpret complex documents, including legal and patent materials.

Responsibilities

• Provide high-level support with preparing and filing patent applications (provisionals, non-provisionals, continuations, divisionals, national filings).
• Assist with filings to USPTO, International Bureau, and foreign offices.
• Prepare and report communications to clients in a timely manner.
• Draft complex correspondence and documents; manage multiple matters efficiently.
• Manage client matter files, conflict checks, and docketing activities.
• Support billing and pre-bill processes as needed.

Skills

Attention to detail

Multi-tasking

Communication skills

Microsoft Word

Education

Bachelor’s degree preferred

Tools

USPTO Patent Center

EPAS

Docket software

Microsoft Excel

Microsoft Outlook

Job description

A leading national law firm is seeking a Senior Patent Practice Secretary to provide administrative support and perform complex and specialized patent support activities related to the specific work and function of attorneys and agents in the patent group. This role may also provide some level of client management support to attorneys and clients, and relieves attorneys and other personnel of administrative and clerical responsibilities.

Responsibilities

General Legal Secretarial Duties

• Answer telephones for attorneys and others in a professional manner; take messages and forward calls to appropriate parties
• Process incoming and outgoing mail
• Calendar and schedule for attorneys as well as on the department calendar, as applicable
• Open new client matter accounts, including conflict checks, intakes, retainer letters, and file opening
• Organize and maintain electronic and paper client files and keep filing up-to-date
• Retrieve existing files and work with Records staff to close out and send files to off-site storage
• Enter attorneys' time
• Prepare travel arrangements for attorneys and clients
• Provide high-level assistance to attorneys, agents, and/or law clerks with managing multiple clients and/or matters
• Provide high-level assistance with preparing new patent applications for filing, including provisionals, non-provisionals, continuations, divisionals, §371 national filings, Requests for Continued Examination (RCE) applications, and all related documents
• Provide high-level assistance with preparing and filing documents with the U.S. Patent and Trademark Office (USPTO), various international patent agencies (such as the International Bureau), and filing patent applications with corresponding foreign patent offices via foreign agents
• Provide high-level assistance with preparing and reporting incoming communications to clients in a timely manner
• Provide high-level assistance with preparing and filing responses and/or amendments to Office Actions
• Prepare formal documents, obtain appropriate signatures, and follow up as needed
• Upload documents to clients' databases in a timely manner and ensure information and/or documents are uploaded accurately
• Review issued patents and draft Certificates of Correction, as needed
• Review Notices of Allowance, prepare checklists, and ensure completeness prior to payment of Issue Fees
• Communicate with docket staff regarding calendaring and docketing correspondence and action due dates to and from domestic, foreign, and international patent offices
• Review and monitor clients' dockets, follow up as needed, provide updated information to docket staff, and reconcile dockets on a regular basis
• Review attorney dockets, provide updated information to docket staff, and reconcile dockets on a regular basis

Administrative and Operational Support

• Learn and maintain knowledge of practice and client-matter history
• Take initiative, with attorneys' permission, to review emails, delegate to other parties, or escalated to attorneys for action
• Demonstrate expertise in department-specific topics, procedures, and software
• Respond to attorney and client needs with a sense of urgency, ensuring resolution with appropriate follow-up
• Draft complex correspondence and documents and anticipate attorneys' needs
• Maintain skills necessary to function effectively and meet all expectations of the role, including the basic functions of core technology tools
• Participate in firm training opportunities; participate in training of other employees and staff members to promote cross-training; assist colleagues in learning new skills and tasks
• Maintain confidentiality of all client and firm information and procedures
• Perform word processing from handwritten notes, drafts, or oral instructions in a variety of correspondence, reports, memoranda, and legal documents
• Depending upon office location, may contribute to efficient office operations by participating in scheduled responsibilities for conference room scheduling and maintenance, ordering meals, preparation of beverage service for meetings, kitchen maintenance, recycling, etc.
• Ensure client satisfaction throughout all position responsibilities; regularly review client service procedures and standards; identify and recommend improvements and enhancements to client service
• Proactively communicate with co-workers and attorneys to ensure firm needs are met
• Assist with reviewing and editing pre-bills and distribute pre-bills for review as needed; follow up to ensure monthly billing is complete in accordance with firm and client deadlines
• Clarify tasks and confirm understanding
• Share firm and technical knowledge with others
• Provide back-up support to team members as required
• Work remotely when required, ensuring tasks are completed timely and efficiently; maintain regular communication with staff, attorneys, and supervisors while working remotely, and follow all remote work policies and procedures
• Perform all other duties as assigned

Qualifications

• Bachelor's degree preferred
• 5+ years of experience in patent prosecution required; law firm experience preferred
• Advanced knowledge of CFR, MPEP, and other patent-related laws and regulations
• Working knowledge and experience with reviewing and reconciling a patent docket
• Working knowledge and experience with the USPTO's Patent Center and Electronic Patent Assignment System (EPAS)
• Proficiency with Microsoft Word, Outlook, Excel, docket software, database management, and contact management
• Demonstrated skill in reading, analyzing, organizing, and interpreting documents, including legal, regulatory, and patent documents, as well as instructions furnished in written, oral, diagram, or schedule format
• Effective communication skills, including tact, diplomacy, and discretion when presenting information and responding to questions from clients, attorneys, and managers
• Demonstrated ability to solve problems and deal with a variety of variables in situations where only limited information is provided
• Ability to effectively multi-task and handle competing priorities
• High level of attention to detail; ability to review and proofread documents for grammar, spelling, and readability
• Thorough knowledge of office organization, workflow, and procedures
• Thorough knowledge and use of the firm's technological tools
• Ability to work independently as well as part of a team, as needed

Compensation: $95,000.00-$110,000.00, plus overtime and bonus