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Cooley LLP

IP US Filing Specialist (Quality Control)

Cooley LLP, Palo Alto, California, United States, 94306

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IP US Filing Specialist (Quality Control)

Cooley LLP is seeking an IP US Filing Specialist (Quality Control) to join the IP Services team. Position Summary : The IP US Filing Specialist (Quality Control) is responsible for carrying out quality control (QC) functions associated with US patent filings. The Specialist also carries out the full duties and responsibilities of a US Filing Specialist in providing support to patent attorneys, agents, and clients in filing and maintaining US applications and patents. Position Responsibilities

QC responsibilities: Coordinate with IP professional staff and patent practitioners to ensure the accuracy, completeness, and timeliness of US patent filings Complete quality control checklist to ensure compliance with the firm’s risk management directives and best practices Triage incoming US filings to be checked, prioritizing as necessary and communicating expected turnaround to the filing USFS and practitioners US Filing Specialist (USFS) responsibilities: Coordinate with IP professional staff, patent practitioners and clients with respect to assigned US patent prosecution matters Analyze correspondence received from USPTO to ensure accuracy of information for docketing purposes; forward all USPTO mail to Client Team and provide timely reminders of upcoming dates Prepare and review required documents for filing; upload of same with the USPTO for all US patent prosecution filings, including applications (utility or design, provisional, nonprovisional, divisional, continuation, and national stage), responses to any PTO actions or examinations, petitions, terminal disclaimers, issue fee payments, etc. Prepare, file and report of US formalities (e.g., POAs, assignments, declarations, drawings), and non-substantive USPTO documents, such as filing receipts, publications, and reminder letters to clients about upcoming deadlines Handle and report all substantive USPTO actions with input from the Responsible Attorney, including draft amendments/responses to official actions and notices, obtaining identified references, processing notices of allowance, and coordinating related paperwork (e.g., extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.) Proof and forward Letters Patent to the client Provide client support for portfolio management, including reporting guidelines and responding to client inquiries Maintain knowledge of US patent prosecution rules and suggest procedural modifications as needed Maintain a secondary docket of due dates for each assigned client and provide detailed annotations related to upcoming dates daily Complete administrative tasks including maintenance of client data rooms, responding to deadlines and changes to dockets, and supporting the Docketing Department and other projects as assigned Communicate regularly with the Patent Prosecution Specialist regarding timing of filing IDSs and reporting IDS filings to the client Skills & Experience

Required: Proficiency in Microsoft Office, iManage, and other firm applications after orientation Available to work overtime, as required 3+ years experience in an IP-related role Preferred: Bachelor’s degree Previous law firm experience Direct responsibility for quality control functions in US patent filings Experience researching IP status and history in PTO databases and public databases in other jurisdictions Knowledge of USPTO procedures, MPEP, and related guidelines Competencies

Customer service oriented with strong attention to detail and ability to prioritize and meet deadlines Ability to work independently and under pressure Problem-solving and process improvement mindset Flexibility and agility to adapt to changes Strong initiative and communication skills Cooley offers a competitive compensation and benefits package and is an equal opportunity employer. EEO. The expected hourly pay range for this position, for a 40-hour work week, is $42.00 - $61.00 ($87,360.00 - $126,880.00 annually). Final offer may depend on geographic location, experience, and skillset.

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