1. Position entails all phases of US and foreign patent preparation and prosecution. Emphasis is in design application preparation and handling of correspondence exchanged with the U.S. Patent and Trademark Office (USPTO) and our foreign patent agents. Responsibilities include: document preparation, filing, typing, copying, proofreading and projects as assigned; and maintaining patent files and personal docket, ensuring that all due dates are met and that the company's records are current.
2. Assist attorney in drafting, editing and electronically filing new design applications, prosecution documents and associated transmittal forms at the USPTO, including: responses to missing parts, restriction requirements, and office actions; recordation of assignments; information disclosure statements; and issue fee payments. Identify and resolve formal & semi-substantive patent issues prior to the granting of the US Patent, including a review of the Notice of Allowance & the file history to ensure that all necessary references have been cited to the USPTO; advise attorney of the next best course of action & necessary steps to be taken.
3. Assist attorney in preparing application documentation for foreign patent applications and transmitting instructions to our foreign agents.
QUALIFICATIONS
Education:
High School Diploma or equivalent required. Four-year college degree with strong academic credentials preferred.
Experience (and other qualifications):
Position requires knowledge of the detailed U.S. patent laws & the deadline requirements for various actions, and experience reviewing incoming US & foreign correspondence to confirm the accuracy of the deadline date provided by an IP docketing software system.
Must be able to follow instruction, prioritize workload, efficiently complete assignments in a timely manner, and be able to work independently but cohesively within a team environment. Successful candidate will possess knowledge and experience, superior attention to detail, and excellent organizational and oral and written communication skills.
Successful candidate should have 3 to 5+ years of overall patent prosecution experience including significant experience at a patent law firm preparing and e-filing new applications and prosecution correspondence with the USPTO; foreign filing experience, including drafting and forwarding correspondence to foreign agents; and maintaining a patent docket. Position requires knowledge of rules & requirements set forth by the USPTO. Experience in market clearance and due diligence, including the ability to conduct factual research using online search tools, is desired but not required. General purpose software proficiencies include Microsoft Word, PowerPoint, Outlook, Excel and Adobe Acrobat. Patent-specific software proficiencies include the U.S. Patent and Trademark Office's patent application information retrieval system (PAIR), electronic filing system, and electronic assignment recordation system. High School Diploma or equivalent required. Four-year college degree with strong academic credentials preferred.
Contact:
To Apply please follow the link: https://oakley.taleo.net/careersection/2/jobdetail.ftl?lang=en&job=0026W.
Additional Info:
Employer Type: Large Corporation
Job Location: Lake Forest California
Toler Law Group is seeking a patent attorney with 3+ years experience and a degree in electrical engineering. We provide sophisticated IP services to some of the world's most sophisticated technology companies, many of whom are the amongst the nation's top producers of patents. We work in the areas of electrical engineering and computer-related technology, telecommunications, aerospace and business methods amongst others. As part of our team, you will provide strategic prosecution, offensive and defensive analysis and opinions to help our clients position themselves and their IP portfolios in the global marketplace.
