IP Patent Prosecution Specialist (Diligence)

Cooley is seeking an IP Patent Prosecution Specialist (Diligence) to join the IP Services team.

*Hybrid Schedule Philosophy: As part of the Cooley culture, we recognize and appreciate the value of being together, in person, to build comradery with others in the office and to be a contributing member of the Cooley office. However, we also appreciate the benefits and flexibility that come from remote working. As such, the default assumption for employees and partners is a hybrid schedule: some in-office presence and some work from home days. Employees on a hybrid work schedule must work from their regular state of residence during hybrid remote days and are expected to be within a commutable distance of a Cooley office. (Department director or manager will provide direction on your schedule and any in-office expectations).

Position summary: The IP Patent Prosecution Specialist (Diligence) is responsible for providing specialized patent portfolio analysis and diligence support to patent attorneys, agents and clients and carries out the full duties and responsibilities of an IP Patent Prosecution Specialist (PPS). Specific duties and responsibilities include, but are not limited to, the following:

Patent Diligence support responsibilities:

• Provide support for all patent diligence projects firm-wide
• Conduct client and competitor patent searches using various firm-subscribed databases and public data
• Review patent ownership and prepare chain-of-title review
• Research patent families and prepare patent family trees in Visio
• Prepare and maintain patent portfolio analysis reports
• Perform tasks in connection with Patent Opinions (e.g., conduct timekeeper opinion poll, prepare Officer’s Certificate and back-up checklist, and work with practitioner to confirm chain-of-title and patent schedules)
• Assemble patent claims charts
• Prepare Client Status reports

Patent Prosecution Specialist (PPS) responsibilities:

• Oversee IDS management for assigned client patent portfolios
• Review daily and weekly custom PPS docket reports and update notes in Inprotech events
• Create and maintain complex client IDS spreadsheets in Excel and corresponding records in IDS support software (MaxIDS)
• Prepare IDS forms and collect and clean electronic copies of prior art references
• Monitor US and ex-US prosecution for assigned client portfolios for the purposes of maintaining prior art references
• Perform pre-examination, examination, and post-allowance IDS reviews
• Assist with re-examination petitions to include organization of prior art for IDS’s
• Provide foreign associates with prior art lists to fulfill information requirements for jurisdictions such as Israel, in order to ensure complete disclosure of relevant references
• Regularly monitor USPTO Patent Application Information Retrieval (PAIR) and other databases to verify status of client patent assets and, upon request, competitor patent assets
• Independent docket review, and IDS workflow coordination with the client service team with respect to meeting upcoming deadlines

Skills and experience:

Required:

• Available to work overtime, as required
• After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
• 3+ years experience in an IP-related role

Preferred:

• Bachelor’s degree
• Previous law firm experience
• Experience researching IP status and history in PTO databases, including USPTO systems (PatentCenter), WIPO Patentscope, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
• Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules
   

Competencies:

• Excellent attention to detail
• Strong verbal and written communication skills
• Ability to organize, prioritize and coordinate multiple activities
• Strong judgment
• Team-player with collaborative spirit
• Unwavering ability to handle and maintain confidentiality regarding firm information, projects, client data (if applicable)
• High level of professionalism at all times

Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.

The expected hourly pay range for this position with a work schedule of 40 hours per week is $43.50 - $63.00 ($90,480.00 - $131,040.00 annually). Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate. 

We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and/or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and/or adults and other parental support benefits. In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off (“PTO”) and 10 paid holidays each year. We provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.