US Filing Specialist

San Diego, CA 92102

Job Number: 6712 Salary Range: $92,000-$100,000

Job Description

Our client, a multinational law firm, has an exciting opportunity for a US Filing Specialist to join their team! 

  1. Client Relationship Management: Develop and maintain strong relationships with assigned clients. Deliver responsive and appropriate client service by understanding their needs and anticipating future requests.

  2. Calendar and Docket Management: Maintain a manual calendar (Redbook) and review electronic dockets for assigned clients. Proactively communicate with practitioners to remind them of due dates. Review daily dockets and attend to pertinent entries with the docket department.

  3. U.S. Patent Application Preparation: Utilize your expertise in patent prosecution and adhere to USPTO procedures and firm policies to prepare accurate U.S. patent applications. File applications electronically through EFS-Web and Patent Center.

  4. Correspondence Handling: Process incoming correspondence related to U.S. patent prosecution. Timely report USPTO correspondence to clients within firm reporting standards.

  5. Office Action Responses: Work with practitioners to respond to office actions and complete formalities. Provide all necessary materials and support. Research and provide accurate responses using appropriate resources, including internal databases and external specialized patent resources like PAIR/Patent Center and WIPO.

  6. Deadline Management: Monitor and ensure that all deadlines are met. Follow up both internally and externally as necessary to meet these deadlines.

  7. Client-Specific Guidelines: Apply specialized knowledge of client preferences to assemble, establish, maintain, and adhere to specific guidelines for assigned clients. Document these guidelines for reference.

  8. Client Inquiries: Respond to client inquiries regarding routine patent portfolio matters. Provide status reports to clients upon request.

  9. Colleague Support: Provide backup support for colleagues to complete overflow work.

  10. Mentoring and Training: Proactively mentor and assist in the regular training of junior staff in the department.

  11. Document Management: File documents and emails related to U.S. patent prosecution.

  12. Client File Management: Open electronic files for new applications and submit data change requests as needed. Assist with initiating client file transfers and disengaging clients when necessary.

  13. Invoice Processing: Review vendor invoices for assigned clients and process them for payment through the accounting department.

    Education and Experience
    1. Bachelor’s degree, paralegal certification, or the equivalent in experience
    2. A minimum of 2 years of progressive patent experience required.


Meet Your Recruiter

Dan James
Managing Director

After graduating with an Associates Degree in Business Administration from Westchester Community College Dan wasn't sure exactly what he wanted to do. In February 2013 he decided to put his knack for connecting people with one another to work when he joined The Phoenix Group. When he's not in the office you can find him skiing, golfing, or spending time with his family. 

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