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Morgan Lewis

Patent Prosecution Specialist

Morgan Lewis, Washington, District of Columbia, us, 20022


Patent Prosecution Specialist

Locations: Washington, District of ColumbiaTime Type: Full TimePosted On: Posted 2 Days AgoJob Requisition ID: R2657Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is seeking to hire a Patent Prosecution Specialist. This position will be responsible for support activities related to patent prosecution, including the preparation and filing of documents with the United States Patent and Trademark Office, World Intellectual Property Office International Bureau, and foreign national patent offices in accordance with set guidelines and procedures.A hybrid work opportunity is available for this position.This position will reside in our Washington office with a hybrid in-office/remote working schedule.Responsibilities:Prepare patent prosecution documents, including transcribing instructions (written and/or verbal), producing patent applications, correspondence, reports, memoranda, proofreading and redlining, photocopying, assembling, and distributing.Review and process Filing Receipt, Notice of Recordation, Office Actions, Notices of Allowance, Recordation of Assignment, Letters Patent, and Notice of Publication in accordance with set guidelines and procedures.Prepare pre-issuance documents, which includes Issue Fee Payments and Requests for Recomputations of Patent Term Adjustment.Prepare and file the documents with the USPTO, including Request for Filing Receipt, Request for Corrected Filing Receipt, Issue Fees, Formal Drawings, and New Patent Applications.Prepare non-technical prosecution documents, including Notices to File Missing Parts, Notices to File Corrected Application Papers, Inventor Declaration, Assignment, and Power of Attorney.Review patent files for processing and preparation.Prepare IDS from international and foreign search reports.Prepare client reporting letters and/or correspondence to the foreign associates regarding IDS, foreign disclosures, etc.Analyze PTO-issued documents for accuracy (such as filing receipts, assignment documents, office actions, etc.).Provide copies of documents filed to clients.Monitor patent docket.Contact PTO with status questions.Contact patent examiner regarding missing information.Make arrangements with draftsman to correct drawings as necessary.Prepare and file international/foreign national documents, including PCT Requests and PCT Demands, Responses to PCT Application inquiries and invitations, and National phase application order letters.Possess knowledge of and keep abreast of rules according to the 37 CFR and MPEP.Experience/Qualifications:Bachelor’s Degree from a four-year college or university preferred, not required, and a minimum of one year of related experience, or the equivalent combination of education and experience.To perform this job successfully, the candidate will be flexible, have the ability to manage multiple projects within tight deadlines, and work well in a team-oriented environment.Strong organizational, communication, and interpersonal skills are a must. Flexibility to work overtime preferred.Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.

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