At ArentFox Schiff, we know that diverse backgrounds produce different perspectives, richer thinking, and more creative solutions to the challenges our clients face. We hope you share that vision. Join us and take on the challenge of doing meaningful work while helping us build a culture that reflects our dedication to diversity, equity, and inclusion.
JOB TITLE: US Patent Prosecution Specialist
DEPARTMENT: IP Administration
REPORTS TO: US Patent Prosecution Manager
FLSA CLASSIFICATION: Non-Exempt
LOCATIONS: New York, NY, Washington, DC, Chicago, IL, San Francisco, CA, Los Angeles, CA
JOB SUMMARY
The U.S. Patent Prosecution Specialist will, with minimal guidance, perform complex and specialized work by providing patent prosecution administrative support to assigned clients. A key component of the position is to provide support for portfolio management, prepare and submit papers to the U.S. Patent and Trademark Office (USPTO), correspond with clients and provide status updates, manage departmental deadlines and personal docket, and monitor and update workflows for assigned clients. In addition, the U.S. Patent Prosecution Specialist will ensure compliance with policies and procedures implemented by the client and Firm and support the IP Department to ensure client service and satisfaction are achieved throughout all assigned responsibilities.
PRINCIPAL DUTIES AND RESPONSIBILITIES*
Prepare and electronically file documents at the U.S. Patent and Trademark Office (hereinafter "USPTO"), including applications, preliminary/312 amendments, response to notices, petitions, information disclosure statements, issue fees, etc.
Prepare basic patent documents for client execution and file same at the USPTO, including declarations, assignments, powers of attorney, etc.
Prepare and forward reporting letters to clients regarding USPTO communications, such as Formalities Notices. Also, prepare and forward reporting letters to clients regarding USPTO filings.
Prepare and forward reminders to clients regarding due dates and instructions.
Review application papers being filed in the USPTO for accuracy and completeness regarding inventors, assignees, priority data, etc.
If applicable, enter time and the billing description for completed tasks.
Knowledge/Skills/Abilities:
Knowledge of current U.S. prosecution and U.S. Patent laws and rules preferred.
Knowledge of USPTO online sites and related websites.
Ability to meet or exceed departmental quality and quantity standards per the Patent Prosecution Department Guidelines.
Strong sense of accountability, taking ownership over projects and responsibilities and resolving issues proactively.
Ability to work independently and meet deadlines, including demonstrated ability to work on multiple projects with often competing deadlines.
Proven problem-solving skills and good judgment under pressure.
Ability to resolve issues and concerns proactively, constructively, directly and respectfully.
Ability to assess risk management issues and understanding when to seek appropriate assistance.
Demonstrate a positive, service-oriented attitude and a commitment to teamwork.
Respect for confidentiality of client information.
Ability to accurately interpret a variety of instructions furnished in written or oral form to synthesize complex and diverse information.
Meticulous attention to detail, accuracy and thoroughness.
Ability to communicate effectively with all levels of management, staff and timekeepers.
Strong technical aptitude and understanding, including ability to quickly learn new software applications.
Proficient in software applications related to functions of position, including Word and Outlook; basic knowledge of Excel and PowerPoint preferred; some knowledge of docketing database preferred.
Reliability, flexibility and dependability are essential.
Education
Minimum four-year college degree. Related work experience may be used in lieu of formal education.
Experience
Minimum of two years of experience in patent prosecution.
ABOUT ARENTFOX SCHIFF:
ArentFox Schiff LLP is internationally recognized in core industries where business and the law intersect. With more than 600 lawyers and policy professionals, the firm serves as a destination for an international roster of corporations, governments, private individuals, and trade associations.
The annualized good faith base salary range for this position in the following location(s):
San Francisco: is a minimum of $76,824 to a maximum of $115,236 per year.
Los Angeles: is a minimum of $68,640 to a maximum of $102,960 per year.
New York: is a minimum of $76,824 to a maximum of $115,236 per year.
The actual salary rate offered to candidates within that range will depend on a variety of factors, including without limitation, years of relevant experience, education, applicable certifications, and other relevant professional licenses held, and the candidate's overall qualifications for the position as assessed by the Firm.
ArentFox Schiff is committed to equal employment opportunity and diversity in the workplace. We maintain a policy of considering all qualified applicants for employment without regard to race, color, religion or creed, sex, gender, sexual orientation, gender identity or expression, age, citizenship status, order of protection status, national origin, ancestry, medical condition, genetic information, marital status, physical or mental disability, parental status, source of income, military or veteran status, unfavorable discharge from military service, or any other basis protected by federal, state or local law. We will consider qualified applicants with criminal histories in a manner consistent with the San Francisco Fair Chance Ordinance.
* A job description is a general description of the function and major duties of a job. It may not specify all duties, tasks, and assignments associated with a job. It is not intended to limit or in any way modify the right of management to direct, assign, and control the work of employees in a unit. Accuracy, attention to detail, ability to work effectively in a team environment, and ability to work in an atmosphere of multiple projects and shifting priorities are requirements of all jobs at ArentFox Schiff LLP. Additional job related qualifications may be specified for some openings. Job descriptions are subject to periodic review.
WORKING CONDITIONS
The following table indicates the degree of working conditions expected for the job. Reasonable accommodations may be made to enable individuals with disabilities to meet these requirements.