Patent Prosecution Specialist

Arnold & Porter
United States
Mar 18, 2023
Apr 15, 2023
Trademark Agent
Contract Type
Arnold & Porter has an opening for a Patent Prosecution Specialist in the Washington, DC office. The Patent Prosecution Specialist provides full support to patent prosecution attorneys, patent agents, patent law clerks and other IP legal personnel in filing and maintaining U.S. applications and granted patents on behalf of the Firm's clients.

Responsibilities include, but are not limited to:
  • Preparing and electronically filing the following:
    • A wide range of U.S. patent application types, including national phase, utility, design, provisional, non–provisional, continuation, continuation–in–part, divisional, and reissue.
    • Patent documents, including Assignments, Declarations, Powers of Attorney, and Sequence Listings.
    • U.S. prosecution documents, including complex Information Disclosure Statements (IDS), Preliminary Amendments, Application Data Sheets, Requests for Certificate of Correction, Terminal Disclaimers, Petitions for Expedited Foreign Filing Licenses, Notices of Appeal, and Appeal Briefs.
  • Maintaining Master IDS Spreadsheets in Excel and overseeing IDS management activities (e.g., cross–citing requirements, procurement of references, etc.) for assigned patent portfolios.
  • Maintaining a personal daily docket comprised of internal deadlines, reminders, and various prosecution–related tasks in Inprotech.
  • Monitoring the daily dockets of assigned patent attorneys and other IP legal personnel, and providing timely reminders for all deadlines.
  • Reviewing and reporting formal USPTO communications to clients via e–mail.
  • Assisting with chain–of–title/Assignment diligence projects, as needed.
  • Editing client prebills as directed by patent attorneys; processing all client billing in accordance with the Firm's policies and procedures, with assistance from the Billing Department.
  • Creating new client matters and requesting on–site and off–site client files, with assistance from the Firm's Records and Client Intake Department.
  • Filing correspondence and legal documents in the Firm's electronic document management system.
  • Performing administrative tasks, including inputting, editing and finalizing attorney time into the Firm's time entry system; arranging travel for attorneys via the Firm's Travel Department; managing Outlook calendars for assigned attorneys; and scheduling and coordinating meetings with conference room reservations, meal orders, IT equipment, and calendar invitations.
  • A minimum of two (2) years of previous relevant IP prosecution experience.
  • Four–year college degree or equivalent experience.
  • Experience in Microsoft Office Suite, electronic intellectual property resources, the USPTO website, and IP docketing systems such as Inprotech. Familiarity with SAEGIS and Coresearch is a plus.
  • Prior experience acting as a liaison between attorneys and clients.
  • Comprehensive knowledge of U.S. patent prosecution filings.
  • Detail–oriented, self–motivated, and excellent oral and written communication skills with an emphasis on accuracy and proofreading.
  • Ability to handle a variety of tasks simultaneously.
  • Ability to work independently as well as in a team.
  • Flexibility to work additional hours, as necessary.
Arnold & Porter Kaye Scholer LLP is an equal opportunity and affirmative action employer that does not discriminate on the basis of race (inclusive of traits historically associated with race, including hair texture and protective hairstyles), ethnicity, color, creed, religion, national origin, sex (which includes pregnancy, childbirth, breastfeeding and related medical conditions), age, marital or partnership status, familial status, sexual orientation, gender, gender identity, gender expression, transgender, physical or mental disability, medical condition, family leave status, citizenship status, immigration status, ancestry, genetic information, military or veteran status, or any other characteristic protected by local, state, or federal laws, rules, or regulations. All qualified applicants will receive consideration for employment without regard to any characteristic protected by local, state, or federal laws, rules, or regulations.

Arnold & Porter Kaye Scholer LLP endeavors to make accessible to any and all users. If you would like to contact us regarding the accessibility of our website or need assistance completing the application process, please contact Director of Support Staff Stephanie Denmark at +1 . This contact information is for accommodation requests only and cannot be used to inquire about the status of applications.

For our EEO Policy Statement, please click here . If you would like more information about your EEO rights as an applicant under the law, please click EEO is the LAW and the Supplement poster .

Arnold & Porter Kaye Scholer LLP is an EO Employer – M/F/Veteran/Disability/Sexual Orientation/Gender Identity.

Arnold & Porter Kaye Scholer LLP uses E–Verify, which is a web–based system, to confirm the eligibility of our employees to work in the United States. As an E–Verify employer, we verify the identity and employment eligibility of newly hired employees by electronically matching information provided by employees on the Form I–9, Employment Eligibility Verification, against records available to the Social Security Administration (SSA) and the Department of Homeland Security (DHS). We use E–Verify because we are a federal contractor containing the Federal Acquisition Regulation (FAR) E–Verify clause. Please see the posters for details regarding E–Verify or contact Arnold & Porter Kaye Scholer LLP's Human Resources Department for more information. E–Verify Participation Poster and Right–to–work Poster .