Patent Prosecution Specialist

About this role

Wilson Sonsini is the premier legal advisor to technology, life sciences, and other growth enterprises worldwide. We represent companies at every stage of development, from entrepreneurial start-ups to multibillion-dollar global corporations, as well as the venture firms, private equity firms, and investment banks that finance and advise them. The firm has approximately 1,100 attorneys in 17 offices: 13 in the U.S., two in China, and two in Europe. Our broad spectrum of practices and entrepreneurial spirit allow exceptional opportunities for professional achievement and career growth.

The firm is looking for a Patent Prosecution Specialist to join our growing Patents and Innovation team. The position is responsible for assigned tasks and works under the direction and guidance of attorneys, patent agents, IP specialists, and the department leadership team.

In this role, the Patent Prosecution Specialist manages client portfolios on behalf of the assigned clients, including filings, correspondence, and docket management. It is the job of the Patent Prosecution Specialist to prepare, revise, and file all documents related to US patent prosecution. It includes new patent applications, missing parts, corrected application papers, office action responses and other formal documents, as well as to timely report all official correspondence regarding the same. The Patent Prosecution Specialist must be available to work overtime when required to meet the demands of the position. In addition, the Patent Prosecution Specialist must perform any other general office administrative functions as necessary.

This position is available as a hybrid work schedule.

The Patent Prosecution Specialist must have knowledge of or the ability to: • Handle complex filings for attorneys and staff and provides reliable suggestions and feedback • Strong familiarity with CFR, MPEP and other patent-related laws and regulations, and engage in research when required • Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters • Communicate with clients, examiners, and other parties regarding status of applications and/or other related matters • Maintain close communication with US and foreign paralegals to ensure deadlines are met • Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; provide timely reminders of upcoming dates • Prepare, e-file, and report filing of various legal documents maintaining structural and formatting requirements outlined the MPEP, including applications, (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, etc. • Prepare, e-file and report handling of all associated formalities after filing new applications to include, but not limited to prepare formal documents such as Declarations, Powers of Attorney, Substitute Statements, and Assignments as required by each jurisdiction.  Obtain required signatures and follow up with clients as needed • Report and handle all substantive USPTO actions with input from the Responsible Attorney, prepare draft amendments/responses to official actions, including Responses to Missing Parts, Report Notices of Allowance, address any inventorship/assignment issues, and prepare related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.) • Review and proofread documents from the USPTO (including Official Filing Receipts, Notices of Publication, Notices of Recordation, and Issue Notifications) and report those documents directly to the client. If required, prepares a request for correction, when applicable • Prepare and forward reminders to clients regarding due dates and instructions • Prepare correspondence regarding foreign filing/U.S. conversion deadlines • Prepare correspondence regarding receipt of Letters Patent and Certificates of Correction and mail or ship document(s) to client • Communicate with Harbor for preparation of sequence listings • Order certified copies of Priority Documents • Prepare simple formal drawings for applications • Communicate with vendor for preparation of formal drawings; review drawings for accuracy and completeness prior to submission to the USPTO • Provide client support for portfolio management, including accommodating client-specific reporting guidelines, and responding to client phone calls and/or emails relating to specific requests or reports • Pull docket for assigned clients, maintain detailed annotations and review deadlines daily; maintain complete ownership of docket • Monitor and follow-up on dates associated with the US and foreign docket, including clearing dates and providing follow-up with attorneys, clients, and management to provide adequate time to respond • Clear daily docket reports in collaboration with the IP docket department and in accordance with established firm guidelines • Perform research and compile data as requested by internal team members and clients • Retrieve, review, and analyze information from various sources in a timely manner • Assist legal staff with new business intake, including opening new patent prosecution matters and sub-matters • Prepare Powers of Attorney (POA) for transferred cases • Work with finance to obtain advance retainers • Upload U.S. patent invoices as needed to account payable database • Maintain electronic and physical files; update keep on top memos • Retrieve, review, and analyze information from USPTO’s Patent Application Information Retrieval (PAIR) system • Review and understand rules in Code of Federal Regulations (CFR) and Manual of Patent Examining Procedure (MPEP) • Knowledge of Patent Center, Electronic Filing System (EFS), and Electronic Patent Assignment System (EPAS) • Contact the Applications Assistance Unit, Electronic Business Center or Assignment branches of the USPTO, as neede

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