Patent Specialist – Newark, NJ

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

Benefits offered by this job

Firm-Paid life and AD&D insurance

Disability benefits

Medical coverage

401(k) plan

Paid time off and holidays

Job summary

McCarter & English, LLP in Newark, NJ seeks a Patent Specialist to support patent prosecutors with filing, IDS, responses, and maintenance fees. The role requires a bachelor’s degree or secretarial/business certificate and at least two years of patent-related legal assistant experience.

The ideal candidate will be proficient with Patent Center, Microsoft Office, and document management systems, and able to multi-task in a fast-paced environment while maintaining meticulous records for

Qualifications

• Two years of legal assistant experience in the patent field
• Bachelor's degree or certificate from a professional/business/secretarial school
• Interest in assisting our legal professionals in a vibrant patent practice

Responsibilities

• 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.
• Prepare Information Disclosure Statements (IDSs) for attorney review, file IDSs, and conduct IDS diligence for portfolios filed in multiple countries.
• Draft client reporting correspondence relating to patent prosecution for attorney review.
• Pay patent maintenance and annuity fees.
• Monitor patent prosecution dockets and remind for upcoming actions; prepare documents for attorney review.
• Maintain client digital files relating to patent prosecution matters.
• Update/maintain patent family tracking information.
• Work with support vendors for patent matters.
• Conduct PCT patent filings and assist with related issues.

Skills

Excellent oral and written comms

Typing accuracy

Multi-tasking in fast-paced env

Strong organizational skills

Education

Bachelor's degree or professional/secretarial certificate

Tools

MS Office

iManage

Patent Center

Job description

McCarter & English is seeking a Patent Specialist for our Newark, NJ 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 Newark office, and a desire to work hard and to learn. Patent experience a plus. 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.
• Payment of patent maintenance and annuity fees.
• 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.)
• Working with support vendors for patent matters (patent draftsperson, annuity payment services, 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 discountsthrough Working Advantage

Other Compensation:

• Eligibility for discretionary bonus.

McCarter & English, LLP is an Equal Opportunity Employer.