Position Information

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.

Qualifications:

• 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.

To be considered for this position please apply directly via our website: Patent Prosecution Specialist | Current Opportunities | Careers | Arnold & Porter (arnoldporter.com)