Patent Prosecution Specialist

Overview

A growing Patents and Innovation team is seeking a Patent Prosecution Specialist to manage client patent portfolios, including filings, correspondence, and docket management. This role involves preparing, revising, and filing all documents related to U.S. patent prosecution under the guidance of attorneys, patent agents, IP specialists, and department leadership.

This position offers a hybrid or fully remote work schedule with core hours from 9:00 AM to 5:00 PM Pacific Time.

Responsibilities

• Manage complex patent filings and provide reliable suggestions and feedback
• Maintain strong familiarity with CFR, MPEP, and other patent-related laws and regulations; conduct research as needed
• Coordinate with IP staff, patent practitioners, and clients on assigned U.S. patent prosecution matters
• Communicate with clients, examiners, and other parties regarding application status and related issues
• Maintain close communication with U.S. and foreign paralegals to ensure deadlines are met
• Analyze USPTO correspondence for docketing accuracy and provide timely reminders of upcoming dates
• Prepare, e-file, and report filing of various legal documents including new applications (utility, design, provisional, nonprovisional, divisional, continuation, national stage), office action responses, petitions, terminal disclaimers, etc.
• Prepare and file formal documents such as Declarations, Powers of Attorney, Substitute Statements, and Assignments; obtain required signatures and follow up with clients
• Handle substantive USPTO actions with attorney input, draft amendments/responses to official actions, and prepare related paperwork (extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses)
• Review and proofread USPTO documents (filing receipts, notices of publication, recordation, issue notifications) and report to clients; prepare correction requests if needed
• Prepare and send reminders to clients regarding due dates and instructions
• Prepare correspondence related to foreign filing and U.S. conversion deadlines
• Manage receipt and distribution of Letters Patent and Certificates of Correction
• Coordinate with vendors for preparation and review of formal drawings
• Provide client support for portfolio management, including client-specific reporting and responding to inquiries
• Maintain detailed docket annotations, review deadlines daily, and ensure timely completion of required actions
• Collaborate with IP docket department to clear daily docket reports per firm guidelines
• Conduct research and compile data as requested by internal teams and clients
• Assist with new business intake, including opening new patent prosecution matters
• Prepare Powers of Attorney for transferred cases
• Coordinate with finance to obtain advance retainers and upload patent invoices
• Maintain electronic and physical files and update memos
• Utilize USPTO’s Patent Application Information Retrieval (PAIR) system and other patent office databases
• Stay current with changes in U.S. patent prosecution rules and suggest procedural improvements
• Enter daily fixed fees into the database
• Perform other related duties as assigned

Requirements

• Bachelor’s degree and/or paralegal certificate preferred
• Minimum 5 years of experience in U.S. patent prosecution or legal assistant role with intermediate knowledge of all patent prosecution stages and USPTO requirements
• Proficiency with U.S. and foreign patent office websites and ability to research and locate data
• Experience with calendaring systems required; knowledge of Computer Packages Inc. (CPI) calendaring system is a plus
• Strong skills in Microsoft Office, database management, and electronic file handling
• Familiarity with USPTO systems including Patent Center, Electronic Filing System (EFS), Electronic Patent Assignment System (EPAS), and PAIR
• Ability to work well under pressure, manage multiple competing tasks, and adapt to various practice management styles
• Excellent analytical, organizational, and communication skills
• Strong attention to detail and accuracy in reviewing and proofreading documents
• Ability to prioritize workflow independently with exceptional time management and work ethic
• Demonstrated tact, diplomacy, and discretion when handling sensitive information
• Ability to follow policies and procedures while working remotely and in person
• Team player willing to provide backup support as needed
• Availability to work overtime when required

Compensation & Benefits

• Hourly pay range: $37.49 – $50.72, depending on qualifications, experience, education, certifications, and work location
• Compensation may include overtime and a discretionary year-end merit bonus based on performance
• Competitive salary and benefits package offered

Location

Primary location is San Diego, with other locations possible including Boulder, Century City, and Los Angeles. The position supports hybrid or fully remote work arrangements.