Patent Prosecution Specialist

Morgan, Lewis & Bockius LLP

Mar 19

Applications are closed

Job
Full-time
Entry Level
Legal
Washington, DC

Requirements

Bachelor’s Degree, from four-year college or university, preferred, not required, and a minimum of one year of related experience, or the equivalent combination of education and experience.
To perform this job successfully, the candidate will be flexible, have the ability to manage multiple projects within tight deadlines and work well in a team-oriented environment.
Strong organizational, communication and interpersonal skills a must. Flexibility to work overtime preferred.

Responsibilities

Prepare of patent prosecution documents, including transcribing instructions (written and/or verbal), producing patent applications, correspondence, reports, memoranda, proofreading and redlining, photocopying, assembling and distributing.
Review and process Filing Receipt, Notice of Recordation, Office Actions, Notices of Allowance, Recordation of Assignment, Letters Patent, and Notice of Publication in accordance with set guidelines and procedures.
Prepare pre-issuance documents, which includes Issue Fee Payments, and Requests for Recomputations of Patent Term Adjustment
Prepare and file the documents with the USPTO, including Request for Filing Receipt, Request for Corrected Filing Receipt, Issue Fees, Formal Drawings and New Patent Applications
Prepare non-technical prosecution documents, including Notices to File Missing Parts, Notices to File Corrected Application Papers, Inventor Declaration, Assignment and Power of Attorney
Review patent files for processing and preparation
Prepare IDS from international and foreign search reports
Prepare client reporting letters and/or correspondence to the foreign associates regarding IDS, foreign disclosures, etc.
Analyze PTO-issued documents for accuracy (such as filing receipts, assignment documents, office actions, etc.)
Provide copies of documents filed to client
Monitor patent docket
Contact PTO with status questions
Contact patent examiner regarding missing information
Make arrangements with draftsman to correct drawings as necessary
Prepare and file international/foreign national documents, including PCT Requests and PCT Demands, Responses to PCT Application inquiries and invitations and National phase application order letters
Possess knowledge of and keep abreast of rules according to the 37 CFR and MPEP

FAQs

What are the main responsibilities of a Patent Prosecution Specialist at Morgan, Lewis & Bockius LLP?

The main responsibilities of a Patent Prosecution Specialist include supporting activities related to patent prosecution, preparing and filing documents with the United States Patent and Trademark Office, World Intellectual Property Office International Bureau, and foreign national patent offices, as well as preparing and filing documents related to international and foreign national patent applications.

Where will the Patent Prosecution Specialist position be located?

The Patent Prosecution Specialist position will be located in our Washington office with a hybrid in-office/remote working schedule at Morgan, Lewis & Bockius LLP.

What are the qualifications required for the Patent Prosecution Specialist position?

Qualifications for the Patent Prosecution Specialist position may vary, but typically include a bachelor's degree in a related field, experience with patent prosecution support activities, knowledge of patent filing procedures, and excellent organizational skills. Additional qualifications may be required depending on the specific needs of the hiring firm.

Morgan, Lewis & Bockius LLP

Law firm working with clients ranging from established, global Fortune 100 companies to enterprising startups.

Law

Industry

1001-5000

Employees

1873

Founded Year

Mission & Purpose

From our offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, we work with clients ranging from established, global Fortune 100 companies to enterprising startups. Our team of more than 2,200 lawyers and legal professionals provides comprehensive corporate, transactional, litigation, and regulatory services in major industries, including energy, financial services, healthcare, life sciences, retail and ecommerce, sports, technology, and transportation. We focus on both immediate and long-term goals with our clients, helping them address and anticipate challenges across vast and rapidly changing landscapes.