Patent Specialist

Kilpatrick Stockton LLP Menlo Park, CA
Kilpatrick Townsend has an immediate opening for a Patent Prosecution Specialist (legal secretary/paralegal) in our Silicon Valley (Menlo Park) office. This position will be part of our IP department (Electrical and Software team) and will provide secretarial/paralegal level support to attorneys and fellow Pros. Specialists. The job includes being responsibility for document production, including creating, revising and editing documents and finalizing format and style in compliance with appropriate requirements; preparation of documents for mailing, scanning, faxing; management of files and client contact databases; flexibility in daily scheduling and prioritizing work. The position also acts as a liaison for internal and external attorneys/clients, and manages administrative functions.

This position will be part of our IP department (Electrical and Software team) and will provide secretarial/paralegal level support to attorneys and fellow Patent Prosecution Specialists. The job includes being responsibility for document production, including creating, revising and editing documents and finalizing format and style in compliance with appropriate requirements; preparation of documents for mailing, scanning, faxing; management of files and client contact databases; flexibility in daily scheduling and prioritizing work. The position also acts as a liaison for internal and external attorneys and clients, and manages administrative functions.

ESSENTIAL JOB FUNCTIONS:

* Review docket for deadlines; understand docket and deadlines and action needed on each file.

* Filing of U.S. patent applications, both electronically and paper (including preparation and review of necessary filing documents)

* Assist in drafting correspondence to clients regarding status of applications and patents, including reporting of filing receipts for applications, publication notices and forwarding patent certificates.

* Prepare response to notice to file missing parts, shell amendments, notice of allowance review.

* Process payment of Issue Fees.

* Draft detailed letters to client reporting Office Actions and other PTO correspondence

* Review files and assist with preparing Information Disclosure Statement and accompanying documents.

* Draft correspondence with foreign associates, oversee payment of foreign associates' invoices, and prepare reporting letters to client.

* Assist with effecting portfolio transfers and manage multi-client portfolios.

* File and assist in prosecution of design applications (including convention deadlines for filing abroad).

* Knowledge of U.S. and PCT patent rules and procedure; knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein.

* Track chain of title in U.S. patents

* Coordinate telephone messages and conference calls for attorneys and clients.

* Coordinate travel arrangements, including air, hotel, and car plans for attorney and clients.

* Set up and maintain firm files and manage disposition of files.

* Perform a variety of secretarial functions, including processing new client/matters forms and conflicts checks, expense reports and reconciliation, travel diaries, preparation of Reports, tables and Excel documents as requested.

* Provide back-up support to team, department and floor for coverage and project assistance as needed.

* Other tasks as assigned, including billing portions of your time in a Paralegal role.

KNOWLEDGE/SKILLS REQUIRED:

* Bachelor's degree and/or paralegal certificate required, certificate from an ABA-approved program preferred

* Two plus years' experience as a patent prosecution secretary or legal assistant with experience working in a law firm or in house legal environment.

* Good knowledge of Microsoft Word and other comparable document production software such as PowerPoint, Excel, Timekeeping Software, Scanning and Microsoft Outlook.

* Familiar with USPTO (U.S. Patent and Trademark Office) Procedures, Rules and Requirements.

* Ability to navigate USPTO website and knowledge of search tools for Patent & Trademark information.

* Experience with Electronic Filing USPTO procedures.

* Ability to establish effective working relationships throughout operational groups.

* Ability to compose routine correspondence.

* Excellent organizational skills and the ability to handle multiple priorities and to prioritize assignments and meet deadlines.

* Excellent customer service.

* Excellent oral and written communication skills.

* Ability to establish effective working relationships throughout operational groups, maintain confidentiality of client information.

* Must have sense of urgency relating to client requests and should be able to meet deadlines.

* Strong work ethic, flexible, dependable, and positive can-do attitude.