IP Specialist

Employer
Sheppard Mullin
Location
San Diego
Salary
Competitive
Posted
May 21, 2023
Closes
Jun 05, 2023
Practice
Litigation
Position
Trademark Agent
Contract Type
Permanent
Overview

Sheppard, Mullin, Richter & Hampton LLP, a global Am Law 50 firm, has an immediate opening for an IP Specialist in our Del Mar office.

The IP Specialist will primarily support life sciences IP attorneys and patent agents in all aspects of patent prosecution. Assist with daily workflow regarding procedures, deadlines, filings and related documentation from the U.S. Patent and Trademark Office. Responsible for reporting documentation to clients.

Responsibilities

Essential Functions of Job:
  • Proactively manage patent prosecution dockets, ensuring all deadlines are met in a timely manner. Communicate calendar and docket updates to the docketing teams.
  • Work closely with attorneys, technical specialists and patent agents to prepare and file US, PCT, and foreign patent applications and official correspondence using the Firm's standards and procedures. Official correspondence includes, but is not limited to, application data sheets, declarations, powers of attorney, assignments, IDSs, responses to office actions, amendments, issue fee payments and extensions.
  • Prepare client reporting letters, foreign attorney instruction letters, and CPA/CPI status and docket reports for attorney review.
  • Communicate directly with clients, foreign attorneys, and USPTO under the direction of a patent attorney or agent. Double check work product before presenting to attorney for review and again before sending or filing.
  • Ensure that client–matter numbers are opened according to the Firm's guidelines.
  • Timely review and forward annuity and maintenance fee information to the annuity team, and send foreign attorney invoices to the accounting department.
  • Administrative tasks include, but are not limited to, maintaining client files, entering time, and promptly submitting expense reports and vendor invoices.
  • This position will have an annual billable hours requirement.
Qualifications

Required Qualifications: At least three years of experience as a patent prosecution secretary or specialist.
Preferred Qualifications: Experience in the Life Sciences is strongly preferred.

Education

Preferred: Bachelor's Degree

Computer/Software Knowledge

Required: Microsoft Suite including Outlook, Word, Excel
Preferred: First to File and FoundationIP

Work Environment
  • Overtime will be required on occasion as the workload requires.
  • Current Firm policy is hybrid–working in the office at least three days per week, and working from home the rest of the week (subject to change).


The pay range for this position is $31.00 to $67.00 per hour.