Patent Specialist- U.S. & Foreign Filing

McGuireWoods has a need for a Patent Specialist in our Tysons, VA location. This resource will be responsible for managing U.S. and foreign patent applications from start to finish. The ideal candidate will have senior–level knowledge of the patent filing process, and some docketing experience with CPI would be a plus.

McGuireWoods LLP, with offices in the United States and Europe, is a full–service firm providing legal and public affairs solutions to corporate, individual and nonprofit clients worldwide for more than 200 years collectively. Along with excellent benefits, McGuireWoods offers most employees a hybrid remote option allowing flexibility and work–life balance. For more information, please visit . California residents have special rights with respect to personal information. If you are a California resident applying for a position at McGuireWoods, our statement describes your rights and personal information the firm collects.

• Completes filing requirements utilizing USPTO electronic (including Patent Center and DOCX), facsimile and paper filing techniques with Commissioner, United Patent and Trademark Office, including new patent applications for U.S. Provisional/Non–Provisional, U.S. Continuation, U.S. Divisional, U.S. National Stage, PCT, Reexamination, Reissue, Design and foreign patent applications entering the U.S.
• Drafts other patent prosecution documents, including but not limited to: Reply and Amendment responses to Non–Final and Final Office Actions, Election/Restriction responses, Preliminary Amendments, Claims for Priority, Requests for Extension of Time, Information Disclosure Statements, IDS Citations, Terminal Disclaimers, Requests for Continued Examination, Notice of Appeals, Appeal Briefs, Issue Fee Transmittals, Submission of Replacement Drawings, Comments on Reasons for Allowance, Certificate of Corrections and Maintenance Fees, Reexamination and Reissue amendments, and recordation of assignment documents.
• Recognizes/evaluates patent–related correspondence and prepares responses for attorney signature. Recognizes/reports office actions generated by the USPTO, drafts correspondence to foreign associates provides instructions or requests information, and/or prepares action–specific templates for filing with the Commissioner, USPTO. Prepares all forms and filing parts prior to submitting to attorney for signature. Researches each case and incorporates case–specific and substantive information (claims) in correspondence, forms and/or draft legal documents.
• Completes appropriate forms for newly issued patents to Firm's patent maintenance vendor, establishing maintenance fee schedule, reminders and assignment to client's maintenance fee account.
• Prepares/loads documents for electronic filing to include designating correct document types and formats, fee types and ensuring credit and payment of fees. Researches patent applications and/or patents in the USPTO's Private Pair and for client specific extranet sites.
• Perform additional IP related tasks as assigned.
• Requires high school diploma or equivalent and a minimum of four years U.S., PCT and foreign patent prosecution experience and/or training.
• Proven experience managing patent applications from start to finish.
• Excellent communication skills.
• Ability to work independently and as a team.

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