D3 Search is actively recruiting a Patent Practice Specialist II for a well-established, highly respected & growing AMLAW ranked law practice located in Los Angeles, CA (90071 or 90067).
Position Title:
Patent Practice Specialist II
- Note: 5+ years patent experience is REQUIRED.
Location | Map:
Los Angeles, CA (90071 or 90067)
Employment Status:
Full-time | direct hire employment opportunity. Non-exempt role (OT in accordance w/ CA laws).
Employer Work Model:
Hybrid work model (3/2).
Summary:
A prominent AMLAW ranked law practice is hiring an experienced, well-organized Patent Practice Specialist II to support life sciences and healthcare IP attorneys, patent agents, and paralegals in all aspects of patent prosecution.
This includes assisting with daily workflow on conducting research, preparing and filing legal documents, communicating with clients and government agencies, and maintaining accurate records.
The job requires knowledge of U.S. and Foreign patent prosecution rules and procedures. Technical, organizational, and administrative skills are necessary to handle various duties and responsibilities outlined below.
The position handles multiple projects, often in a fast-paced, high-pressure environment, requiring prioritization and flexibility. Collaboration with firm personnel at all levels is integral to the role.
The ideal candidate will have at least 3-5 years’ experience in patent prosecution and US and foreign filings.
Primary Responsibilities and Expectations
- Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, and track one applications. Review, process, and act upon, where applicable, all incoming USPTO communications.
- Prepare and file documents with the USPTO, including responses to USPTO pre-examination formalities notices, corrective documents, responses to Office Actions, e-terminal disclaimers, AFCP 2.0 requests, requests for continued examination, and notice of appeals, amendments after allowance, issue fee transmittals, etc.
- Prepare amendment shells.
- Track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms.
- Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO.
- Prepare and file documents related to sequence listings.
- Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review and proof certificates of correction.
- Prepare client patent portfolio summary reports
- Contact the USPTO regarding the status of applications.
- Prepare and file PCT applications.
- Review, process, and act upon, where applicable, all incoming PCT communications.
- Prepare and file with US Receiving Office or International Bureau rule 92bis requests, responses to Invitations from the RO or IB, article 19 and 34 amendment and demands, etc.
- Prepare, coordinate, and send instructions to foreign counsel on direct and/or national stage filings.
- Monitor and follow-up with foreign counsel on deadlines to ensure timely completion and filing of outstanding actions.
- Coordinate with outside vendors and foreign counsel to ensure appropriate legalization through completion of filing.
- Prepare cost estimates for filing of foreign applications.
- Review and proof, when applicable, patent certificates and forward to clients.
- Submit conflict checks and open new matters, including preparation of engagement letters and management of client and case documents.
- Ensure that client matter numbers are opened according to the Firm’s guidelines.
- Maintain working knowledge of client guidelines, procedures, and preferences. Prepare filing documents and client correspondence in alignment with these procedures.
- Review actions entered by the Docketing team for accuracy and inform Docketing of any discrepancies.
- Review and manage assigned dockets.
- Monitor deadlines, and follow-up with attorneys, agents, and paralegals in a timely manner.
- Prepare and distribute docket or status reports as directed.
Essential Job Functions
- Assist the team with daily workflow tasks and projects in a high volume, fast paced practice while timely identifying and prioritizing time sensitive matters.
- Work closely with attorneys, patent agents, paralegals, and practice specialists to prepare and file official correspondence using the Firm’s standards and procedures.
- Maintain client files, enter time, submit expense reports, process case-related invoices.
- Proactively manage casework and assignments, ensuring all deadlines are met in a timely manner. Communicate docket updates to Docketing.
- Work diligently to meet the annual billable hours requirement.
- Must be available and able to work during core business hours.
- Attend and actively participate in all training programs suggested by the Director of IP Administration, the IP Manager, and Office Administrator.
Required Qualifications:
- A minimum of 3-5 years of patent prosecution experience in a law firm.
- Strong knowledge of U.S., PCT, and foreign patent rules and procedures.
- Strong working knowledge of filing in USPTO Patent Center and preparing and/or filing in WIPO ePCT.
- Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
- Ability to work independently and within a team environment.
- Possess excellent spelling, grammar, and punctuation skills.
- Strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines.
- Clear and concise communication skills
- Ability to work overtime, evenings, and weekends, as needed.
- Experience working with life science clients and US and foreign requirements for sequence listing submissions is preferred, but not required.
Education and/or Experience
A high school diploma or equivalent is required, plus substantial and relevant work experience. A bachelor's degree or some college is preferred.
Annual Salary/Compensation:
Salary is up to 120K (DOE/DOQ).
Benefits Summary:
Comprehensive & robust health benefits package, generous PTO, 401K, paid parking onsite, continuing education contributions and many other employee-centered perks, etc. Highly collaborative, collegial and supportive work environment.
If interested in this full-time/direct hire Patent Practice Specialist II role with this highly respected and growing AMLAW ranked law practice situated in Los Angeles, CA (90071 or 90067), and you meet the above qualifications/requirements, please contact the following D3 rep.:
Don Moser | D3 Search
| ☎️ 213-785-2485
D3 Legal Search, LLC (aka D3 Search), and its clients are equal opportunity employers. Pursuant to local ordinances, we will consider qualified applicants with criminal histories in a manner consistent with the requirements of the Fair Chance Initiative for Hiring Ordinance.