Patent Specialist / Patent Legal Assistant

K&L Gates is a fully integrated global law firm with a commitment to innovation and client service. They are seeking a Patent Specialist to prepare and file patent applications, manage prosecution filings, and perform legal secretarial duties to assist attorneys and Patent Agents.

Responsibilities

• Prepare, review, and file PTO communications including, but not limited to, new applications; Office Action responses, Information Disclosure Statements, assignments and related ownership transfers, and the like
• Manage specific clients’ Extranet systems to access and communicate all correspondence, PTO filings, and PTO mail
• Review daily docket and deadlines
• Order documents, file histories, certified copies, etc
• Maintain current knowledge of IP rules and procedures
• Assist in other duties/special projects as assigned by supervisor or requested by lawyers
• Perform a variety of foreign prosecution-related tasks such as preparation and filing of PCT applications and all associated non-U.S. prosecution filings
• Enter national and regional stage and all associated formality requirements specific to each country
• Prepare and send necessary communications directly to foreign associates in order to manage and maintain foreign prosecution matters
• Report mail associated with foreign filings to the client
• Report, issue, and docket in own Outlook calendar soft deadlines (deadlines to provide client recommendation) when reporting foreign mail with a deadline
• Send reminders to attorneys related to soft deadlines
• Review daily docket and deadlines
• Analyze issued U.S. patents for proper Patent Term Adjustment
• Use patent analytical software to research and compile worldwide patent portfolio data
• Provide costs estimates using Global IP Estimator
• Order documents, file histories, certified copies, etc
• Maintain current knowledge of all foreign IP rules and procedures
• Assist in other duties/special projects as assigned by supervisor or requested by lawyers
• Create letters, legal documents, and memos in Word, spreadsheets in Excel, slide shows in PowerPoint; create and work with tables; create tables of contents; use spell-check and thoroughly proofread content of all documents
• Enter, edit, and track daily time in the firm’s time entry application according to required deadline
• Work with attorneys and other legal secretaries in reviewing and editing proformas and work with Accounting to finalize and submit client invoices on a timely basis
• In Outlook, manage inbox (creating folders), manage calendar, set-up meetings electronically, manage contacts, work and search in the firm’s document management system and understand and set-up distribution lists
• Prepare preparation of check requests and firmwide expense reports accurately and promptly
• Possess knowledge of and apply high level of detail to file openings and conflict checks using the firm’s online file opening system
• Possess working knowledge of the firm’s record management system to store and retrieve hard copy documents, create labels, request folders, store and retrieve electronic documents, and store and retrieve e-mails
• Assist other secretaries and Patent Specialists with overflow work and provide backup support during vacations, leaves of absence, etc
• Coordinate and verify travel arrangements with our service providers and process related business expense reimbursements
• Schedule meetings, book conference rooms, video conferences and Webexes

Skills

• High school diploma or equivalent
• Knowledge and understanding of Intellectual Property basic legal terminology
• Ability to concentrate for lengthy periods of time while maintaining a focus on detail
• Ability to handle multiple tasks and routine responsibilities on a daily basis and a willingness to make judgment decisions
• Ability to balance the initiative with level of knowledge, a willingness to follow instructions and the responsibility of bringing any problems, concerns, or discrepancies to the attention of the supervising attorney or paralegal
• Ability to communicate effectively with a varied audience, including all levels of firm members, vendors, clients, and other outside interested parties
• Must be able to communicate and interact effectively with employees and/or other clients
• Effectively manage and communicate confidential issues
• This job operates in an office setting and is largely sedentary, requiring the routine use of a computer and other standard office equipment. The ability to open file cabinets, lift files, bend, and stand on a stool may also be required
• College degree preferred

Benefits

• Medical/Prescription Drug Coverage (including a Health Savings Account feature)
• Back-up Child/Elder Care and access to a caregiving concierge
• Dental Insurance
• Wellness Program
• Vision Insurance
• Pre-tax Commuting Benefits
• 401(k) Retirement Plan and Profit Sharing
• Business Travel Accident Insurance
• Short- and Long-term Disability Protection
• Pet Insurance
• Life Insurance (including Basic, Supplemental, Spouse, Child, and Accidental Death and Dismemberment)
• Health Advocacy Services
• Paid Time Off (20 days/year through first 4 years of employment; 25 days/year after 5 years of employment)
• Identity Protection/Restoration and Fraud Insurance
• Parental Leave (18 weeks of which 6 are paid; short-term disability may provide additional paid time off)
• Student loan refinancing options and access to a student loan concierge service
• Paid Holidays (12)
• Addiction Resources
• Family Building Benefits
• Breast Milk Delivery and Lactation Support Services
• Flexible Spending Accounts
• Employees also may be eligible to receive bonuses and certain expense reimbursements
• Employee Assistance Program
• Professional Development and CLE Credit Opportunities
• 529 Deductions
• Relocation
• Accident Insurance
• Employee Referral Program
• Critical Illness Insurance
• Hybrid/Remote Work Opportunities
• Hospital Indemnity Insurance
• Perks including: Technology, Entertainment, and Travel Discount Programs
• Bereavement Leave
• All other benefits (such as leaves of absence) required by law

Company Overview

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