Boston MA
Legal

Patent Prosecution Administrator

CM Legal

Patent Prosecution Administrator

Our client is seeking a Patent Prosecution Administrator (PPA). The PPA will demonstrate comprehensive knowledge and understanding of U.S. and international patent law to prepare filings, manage deadlines and draft related correspondence. This individual will also be responsible for monitoring filing deadlines, time entry, editing client bills and processing invoices in accordance with firm procedures. 
 
Responsibilities

  • Coordinates U.S. and international patent application filings procedures with attorney by working independently and only seeking attorney input when required to resolve special situations or issues. 
  • Provides attorneys with information and/or materials to enable them to meet their responsibilities, including proactively identifying and clearly communicating issues, along potential options for handling addressing the issues, to attorneys. 
  • Determines, distributes, and ensures compliance with client-specific procedures by serving as a leader and resource for client teams and maintaining close relationships with clients in order to address changes proactively and quickly in procedures or requirements and to address issues. 
  • Reviews for accuracy reports from USPTO and foreign patent office papers in a timely manner (e.g., office actions) [This may be client specific; meaning, working attorney and secretary may file responses to office actions and report the same to client]. 
  • Independently and proactively prepares formalities associated with USPTO filings, including application papers, responses to Missing Parts, Information Disclosure Statements, Oaths/Declarations, correction of filing receipts, publication requests, assignment recordation, issue fee payment, certificate of correction. 
  • Drafts correspondence to client, foreign counsel, and others. 
  • Prepares and files new U.S. and national stage applications. 
  • Prepares and files new PCT applications. 
  • Prepares monthly client reports without prompting by attorneys or client. 

Knowledge, Skills, & Abilities

  • Bachelor’s degree and minimum of eight years of patent prosecution experience in a professional services environment; OR in lieu of a degree, a minimum of nine years of patent prosecution experience in a law firm environment required 
  • Demonstrated expert knowledge and solid understanding of international and USPTO (U.S. Patent and Trademark Office) patent law rules, procedures, and requirements 
  • Ability to navigate USPTO (and/or international patent offices’) website and knowledge of search tools for patent and trademark information and experience elevating issues to appropriate representatives if clarifications are needed 
  • Strong experience with Electronic Filing USPTO or international procedures 
  • Ability to prepare and file new U.S. and national stage applications, new PCT applications, and other responses in the PTO as required 
  • Knowledge of Microsoft Office Suite, including meeting platforms such as Teams and Zoom, and the ability to learn the systems and databases used by the IP operations department and the firm 
  • Solid experience with case/matter management and/or other database tools and technologies used to manage data and information 
  • Expert research skills and proficiency in using various research tools, including the Internet and government websites 

 

  • Max. file size: 300 MB.

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