Job Information
DLA Piper IP Specialist in Philadelphia, Pennsylvania
DLA Piper is, at its core, bold, exceptional, collaborative and supportive. Our people are the backbone, heart and soul of our firm. Wherever you are in your professional journey, DLA Piper is a place you can engage in meaningful work and grow your career. Let’s see what we can achieve. Together.
Summary
As an IP Specialist you will be responsible for providing administrative and patent prosecution support to our prosecution practice group.
Location
This position is expected to work a hybrid work schedule in downtown Pittsburgh, which is an extension of our Philadelphia office.
Responsibilities
• Prepares and finalizes all documents needed to complete the filing of provisional, non-provisional and PCT applications.
• Prepares formal documents (assignment, declaration, power of attorney), obtains appropriate signatures, and follows-up as needed.
• Records assignments with US Patent Office. Files declaration and power of attorney documents.
• Assists in drafting correspondence to clients regarding status of applications and patents, including reporting filing receipts for applications, publication notices and forwarding patent certificates.
• Prepares and files responses to corrected applications papers, request for corrected filing receipts, updates to applicants and inventors (application data sheet).
• Prepares and files response to restriction requirements along with preliminary amendments.
• Prepares office action response shells and letters to client reporting office actions along with pending claim set.
• Prepares and files response to office actions along with extensions of time, terminal disclaimers, declarations, exhibits, etc.
• Reviews and manages docket for U.S. and foreign deadlines, understands docket and deadlines and action needed on each file.
• Reviews files and prepares information disclosure statement and accompanying documents.
• Contacts outside vendors to follow-up on drawings, translations, certified copies, etc., for filing with the Patent and Trademark Office.
• Retrieves information from USPTO website and other internet research.
• Overall support for all aspects of portfolio management.
• Stays current and compliant with MPEP and CFR rules and administrative changes at the USPTO.
• Performs conflict checks and open new matter numbers for clients.
• Prepares new client engagement letters.
• Prepares conflict waiver letters.
• Assists attorneys with time entries (Webview), expense reports, and invoice approvals.
• Assists attorneys with other administrative tasks or special projects as needed.
• Other duties as assigned.
Desired Skills
Must have experience filing with the USPTO as well as knowledge of USPTO rules and practices, including docketing, public/private PAIR, US prosecution and formality requirements. Must be a self-starter and have excellent communication, writing and organizational skills including keeping the attorneys and patent agents on track through overseeing the docket and taking a proactive approach. Individual should have proven administrative abilities, excellent judgment, and the ability to handle multiple time-sensitive tasks in a fast-paced environment. Punctuality is a must. Candidate must be able to work independently, as well as be a team player. Strong computer skills are required, including Microsoft Word, Excel, and Outlook. Knowledge of law firm billing programs (Webview) and patent docketing software (OP Solutions Pattsy) helpful.
Minimum Education
- High School Diploma or GED
Minimum Years of Experience
3 years experience office/administrative experience in a professional services and/or legal industry.
Patent prosecution experience highly preferred.
Essential Job Expectations
While the specific job requirements of a DLA Piper position may vary depending upon scope of the job and area of specialty, there are certain universal requirements that are expected of all DLA Piper employees, which include but are not limited to:
Effectively communicate, verbally and in writing, with clients, lawyers, business professionals, and third parties;
Produce deliverables, answer phone calls, and reply to correspondence in an efficient and responsive manner;
Provide timely, accurate, and quality work product;
Successfully meet deadlines, expectations, and perform work duties as required;
Foster positive work relationships;
Comply with all firm policies and practices;
Engage in both physical and sedentary activity, such as (a) working at a computer for extended periods of time, including on-screen reading and typing; (b) participating in digital/virtual conference calls; (c) participating in meetings as needed;
Perform all other duties, tasks or projects as assigned.
Our employees are expected to embrace and uphold our firm values as a part of our DLA Piper culture. We are committed to excellence in how we represent our clients and develop our people.
Physical Demands
Sedentary work: Exerting up to 10 pounds of force occasionally and/or a negligible amount of force frequently or constantly to lift, carry, push, pull or otherwise move objects, including the human body. Sedentary work involves sitting most of the time. Jobs are sedentary if walking and standing are required only occasionally and all other sedentary criteria are met.
Work Environment
- Hybrid - Regular in-office presence with some flexibility for work-from-home
Disclaimer
The purpose of this job description is to provide a concise statement of the work elements and to organize and present the information in a standardized way. It is not intended to describe all the elements of the work that may be performed by every individual in this classification, nor should it serve as the sole criteria for personnel decisions and actions. The job duties, requirements, and expectations for this position may be modified at the Firm’s discretion at any time. This job description does not change the at-will nature of employment.
Application Process
Please apply online if you are a direct applicant. Applicants must apply directly online instead of sending application materials via email.
Accommodation
Reasonable accommodations may be made upon request to permit individuals with a disability to perform the essential functions and responsibilities of the position or to participate in the job selection process. If you have a request for an accommodation during the application process, please contact careers@us.dlapiper.com.
Agency applications will not be considered.
No immigration sponsorship is available for this position.
DLA Piper is an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability, or status as a protected veteran. Job applicant poster viewing center (https://mandatoryview.com/?LicenceId=09b17fa3-b781-4022-bfdd-ec61a570463c&ProductType=OnlineApplicant) .
DLA Piper is, at its core, bold, exceptional, collaborative and supportive
Our people are the backbone, heart and soul of our firm. Wherever you are in your professional journey, DLA Piper is a place you can engage in meaningful work and grow your career. Let’s see what we can achieve. Together.
Get to Know Us
We invite you to learn more about us. Please visit the following pages for more information about DLA Piper.
Laterals (http://www.dlapiper.com/en-us/careers/laterals)
Lateral Partners
Law Students (http://www.dlapiper.com/en-us/careers/law-students)
Business Professionals
Recruitment Agencies:
Per the terms of our agreement, all candidates must be submitted through the firm’s agency portal for consideration. If you have an agreement with the firm, please log in to the agency portal via the following link (https://www.myworkday.com/wday/authgwy/dlapiper/login.htmld?redirect=n) to review positions accepting agency submissions.
Lawyer Positions Only: If you do not have an agreement with us and would like us to consider candidates, please send a blind candidate profile to legalrecruiting-bos@dlapiper.com