The Patent Specialist will assist with specific tasks such as:

U.S. patent prosecution:

• Prepare, review and file U.S. Patent Office communications including, but not limited to, new applications; responses to Office Actions and other communications; Information Disclosure Statements; invention assignments and related ownership transfers;
• Oversee and manage specific client’s Extranet systems to access and communicate all correspondence, Patent Office filings and Patent Office mail;
• Assist attorneys with review of daily docketing tasks and deadlines;
• Communicate with the Patent Office on behalf of an attorney(s) regarding procedural and administrative matters;
• Search for and procure documents, file histories, certified copies, prior art, etc. when requested by an attorney(s);
• Maintain current knowledge of Patent Office Regulations and Rules, and changes in procedures;
• Assist in other substantive duties and special projects as requested by an attorney.

International patent prosecution:

• Perform a variety of foreign prosecution-related tasks such as preparation and filing of PCT applications and other non-U.S. prosecution filings;
• Manage all national and regional stage patent filings as well as formality requirements specific to each country;
• Engage in direct communications with foreign patent attorneys in order to manage and maintain foreign prosecution matters;
• Manage and report to a client(s) incoming mail associated with foreign filings;
• Send reminders to attorneys related to various response deadlines.

Other responsibilities:

• Review daily docket and deadlines;
• Analyze issued US patents for proper Patent Term Adjustment calculations by the Patent Office;
• Use patent analytical software to research and compile worldwide patent portfolio data;
• Maintain current knowledge of international patent rules and procedures;
• Assist in other substantive duties and special projects as requested by an attorney.

The successful candidate for the position of Patent Specialist must be equipped with the knowledge, skills and abilities necessary to carry out the required tasks, including:

• College degree preferred, however, appropriate on-the-job experience is valued;
• Knowledge and understanding of Intellectual Property basic legal terminology;
• Attention to detail;
• Ability to interact with multiple attorneys and staff while handling multiple tasks and special projects as well as routine responsibilities on a daily basis;
• Ability to make informed judgment decisions;
• Ability to balance the use of initiative with level of knowledge, a willingness to follow instructions and recognize when a problem, concern, or discrepancy should be brought to the attention of an attorney;
• Ability to communicate effectively with a varied audience, including all levels of firm members, vendors, clients, and other outside interested parties;
• Ability to effectively manage and communicate confidential issues.

Any information contained on this form represents the usual method of accomplishing the duties in this job.  Reasonable accommodations will be considered in appropriate circumstances.  However, as the nature of an accommodation may vary depending on the needs and desires of an individual with a disability, it is impossible to describe in advance specific accommodations which will be considered.

NOTE: Nothing in this job description restricts the firm’s right to assign or reassign duties and responsibilities to this position at any time.

Contact
Apply on our website using this direct link: https://recruit.klgates.com/psp/PSHRPRD/EMPLOYEE/HRMS/c/HRS_HRAM.HRS_CE.GBL?Page=HRS_CE_JOB_DTL&Action=A&SiteId=1&JobOpeningId=4673&PostingSeq=1.

EQUAL EMPLOYMENT OPPORTUNITY
The Firm is an equal opportunity employer. It is the policy of the Firm that employment decisions shall be based on merit, qualifications and competence. Employment practices shall not be influenced or affected by virtue of a person’s race, color, religion, sex, national origin, age, sexual orientation, gender identity or expression, marital status, disability, military status or any other characteristic protected by applicable law. This policy governs all aspects of employment including, without limitation, recruiting, hiring, compensation, benefits, promotion, assignment and dismissal. In addition, it is the Firm’s policy to provide an environment that is free of unlawful harassment of any kind including, without limitation, that which is sexual, racial, age-related, disability-related or ethnic background-related.

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Additional Info
Employer Type: Law Firm
Job Location: Boston, Massachusetts