IP Specialist

Keen to become part of a truly global, collaborative team of professionals? Your journey begins here.

PATENT PROSECUTION

• Responsible for daily tracking and clearance of patent prosecution docket for both foreign and domestic matters, insuring all statutory and non-statutory deadlines are met without fail and provide timely reminders to attorneys and patent agents regarding upcoming deadlines as needed.
• Prepare documents such as issue fees, responses, amendments, provisional and non-provisional utility, national stage and design applications, information disclosure statements, declarations, statements of use and extensions in compliance with USPTO guidelines and reporting filings to clients.
• Prepare formal documents for review, including declarations, powers of attorney, and assignments, for execution by the applicant or inventor.
• Coordinate filing of sequence listings and formal drawings prepared by outside vendors.
• Confirm the status of patent and trademark cases with the U.S. Patent and Trademark Office.
• Review face and claims of Letters Patent for accuracy.
• Prepare responses to notices (missing parts, office actions, disclosure statements, etc.).
• Prepare Notice of Allowance checklists for attorney review.
• Prepare and file Information Disclosure Statements, maintain prior art reference spreadsheets and tracking documents.

ADMINISTRATIVE

• Act as an advocate for the IP team this position supports by identifying and proposing innovative solutions to any IP or firm-wide areas for improvement and then following through on associated action items to completion.
• Review and submission of IP-related third-party invoices and USPTO deposit account fees.
• Maintain tracking documents for client portfolios to indicate priority and subject-matter related applications, including monitoring pending claims across global patent portfolios and coordinating cross-citing of prior art references.
• Assist with researching issues relating to monthly client billing, such as client inquiries, estimates, budget tracking, or invoice discrepancies.
• Work directly with billing department to apply fixed-fee patent prosecution schedules to monthly proformas.
• All members of the firm are encouraged to participate in our Global Citizenship program.
• Other duties and projects as assigned.

QUALIFICATIONS

REQUIRED SKILLS

• Proactively complete tasks and following through with the resolution of issues with minimal supervision
• Ability to meet deadlines under very tight time constraints and other demands.
• Strong communication (written and verbal), interpersonal, and interpersonal skills.
• Flexible attitude, with the ability to multi-task and deal well with changing assignments and priorities.

EDUCATION, CERTIFICATIONS, AND/OR EXPERIENCE

• Five (5)+ years of patent prosecution support experience preferred.
• Billing experience, including electronic billing, preferred.
• Experience with prosecution of biotechnology and pharmaceutical sector portfolios preferred.
• Bachelor's degree preferred.

HOURS

Core hours are Monday through Friday, 9:00 a.m. - 5:30 p.m., including one hour for lunch. Must be flexible for overtime.

This job description sets forth the authorities and responsibilities of this position and may be changed from time to time as shall be determined.

Hogan Lovells is an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, pregnancy, age, national origin, disability, sexual orientation, gender identity or expression, marital status, genetic information, protected veteran status, or other factors protected by law.

Hogan Lovells is an Equal Opportunity Employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, pregnancy, age, national origin, disability, sexual orientation, gender identity or expression, marital status, genetic information or protected Veteran status.