IP Patent Specialist

New

Special Counsel is recruiting an IP Patent Specialist for the Chicago office of an international law firm. The IP Patent Specialist will be responsible for preparing and filing new applications with the USPTO, WIPO, and foreign associates, along with all other associated prosecution filings.  No billable hours/35 hours per week.

Responsibilities:

  • Prepare, review, and file PTO communications including, but not limited to, new applications; Office Action responses, Information Disclosure Statements, assignments and related ownership transfers, etc.
  • Manage specific clients’ Extranet systems to access and communicate all correspondence, PTO filings, and PTO mail
  • Review daily docket and deadlines
  • Order documents, file histories, certified copies, etc.
  • Maintain current knowledge of IP rules and procedures
  • Assist in other duties/special projects as assigned by supervisor or requested by lawyers
  • Perform a variety of foreign prosecution-related tasks such as preparation and filing of PCT applications and all associated non-U.S. prosecution filings
  • Enter national and regional stage and all associated formality requirements specific to each country
  • Prepare and send necessary communications directly to foreign associates in order to manage and maintain foreign prosecution matters
  • Report mail associated with foreign filings to the client
  • Report, issue, and docket in own Outlook calendar soft deadlines (deadlines to provide client recommendation) when reporting foreign mail with a deadline
  • Send reminders to attorneys related to soft deadlines
  • Review daily docket and deadlines
  • Analyze issued U.S. patents for proper Patent Term Adjustment
  • Use patent analytical software to research and compile worldwide patent portfolio data
  • Provide costs estimates using Global IP Estimator
  • Order documents, file histories, certified copies, etc.
  • Maintain current knowledge of all foreign IP rules and procedures
  • Assist in other duties/special projects as assigned by supervisor or requested by lawyers
  • Create letters, legal documents, and memos in Word, spreadsheets in Excel, slide shows in PowerPoint; create and work with tables; create tables of contents; use spell-check and thoroughly proofread content of all documents
  • Enter, edit, and track daily time in the firm’s time entry application according to required deadline
  • Work with attorneys  and other legal secretaries in reviewing and editing proformas and work with Accounting to finalize and submit client invoices on a timely basis
  • In Outlook, manage inbox (creating folders), manage calendar, set-up meetings electronically, manage contacts, work and search in the firm’s document management system and understand and set-up distribution lists
  • Prepare preparation of check requests and firm-wide expense reports accurately and promptly
  • Qualifications:

  • High school diploma or equivalent; college degree preferred
  • Knowledge and understanding of Intellectual Property basic legal terminology
  • Ability to concentrate for lengthy periods of time while maintaining a focus on detail
  • Ability to handle multiple tasks and routine responsibilities on a daily basis and a willingness to make judgment decisions
  • Ability to balance the initiative with level of knowledge, a willingness to follow instructions and the responsibility of bringing any problems, concerns, or discrepancies to the attention of the supervising attorney or paralegal
  • Ability to communicate effectively with a varied audience, including all levels of firm members, vendors, clients, and other outside interested parties
  • Would you like to learn more about the IP Patent Specialist position that Special Counsel is recruiting for in Chicago, IL?  If so, then please submit your resume below.  Or, visit our website at www.specialcounsel.com to apply or consider other available opportunities with us. 



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