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Job Details

IP US Filing Specialist

Location
Boston, MA, United States

Posted on
Sep 06, 2021

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Job Summary:
Under general supervision, the IP US Filing Specialist provides assistance to the Intellectual Property practice group and respective client team, with respect to domestic patent filings.
Job Functions:
Responsible for the preparation and filing of all US applications (including 371 applications) and responses, which includes gathering all necessary information, monitoring and maintaining applications pre‐and post‐exam; complying with client instructions, firm procedures, and USPTO foreign requirements (as they relate to 371 applications).
Proactively manage US prosecution docket actions, ensuring all deadlines are met.
Prepare and file formalities (e.g., declarations, assignments, powers of attorney, rights of assignee, small entity statements), send to clients for signature, track statuses through submission, provide necessary follow‐up, and file with the USPTO.
Prepare shells for all US responses.
Preparation of draft reporting.
Essential Competencies:
Works proactively with others to support efforts within the department to improve efficiency and add value.
Organizes and prioritizes assignments and contributes to the department’s ability to meet or exceed goals and standards.
Maintains strong understanding of Patent and Trademark rules of practice (37 CFR).
Uses innovative thinking and exercises sound judgment.
Qualifications:
Minimum of 4 years’ working knowledge of U.S. patent prosecution procedures and regulations.
Familiar with USPTO procedures, rules and requirements.
Ability to utilize IP Software with the demonstrated ability to learn new technology, processes and procedures effectively and with confidence.
Superb attention to detail and ability to produce work quickly, by prioritizing assignments to meet deadlines.
Must be able to work in fast paced environment, independently, as well as in team setting.
Exceptional communication (both written and verbal) skills.
Demonstrated commitment to providing superior client service.
Proficiency in all Microsoft Office products is essential.
Bachelor Degree, or equivalent experience.
Physical Requirements:
Must have minimal physical mobility. Position may occasionally require standing, walking, reaching, and lifting up to 15 pounds.
Must have the ability to operate equipment such as a computer and copy machine.
Must have the ability to communicate clearly and to read and follow detailed instructions.
Must have the ability to prepare assorted documents and other related materials.
Must have the ability to work in stressful conditions under time deadlines.
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