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Bookoff McAndrews (BoMc) is seeking a Patent Specialist with 1-5 years of experience to join our firm’s patent specialist team. Like many “patent paralegal” or “patent legal secretary” positions, this position will provide client-focused support.

Specific Duties

The Patent Specialist’s primary responsibilities will be to perform all tasks to support assigned clients including:

  • demonstrating knowledge of federal rules, regulations, and U.S. and international Intellectual Property Law (37 C.F.R, MPEP, PCT regulations, foreign country laws, etc.);
  • working proactively, independently, and intuitively to assist attorneys with workload management; and
  • managing the lifecycle of U.S. and Foreign patent applications from application filing to grant, including but not limited to:
    • preparation and filing of patent documents and forms via the United States Patent and Trademark Office (USPTO) and World Intellectual Property Organization (WIPO) electronic systems;
    • using the firm’s software tools to prepare USPTO patent prosecution forms, drafting Office Action “shells,” and other patent office e-filings;
    • review of Filing Receipts and other PTO correspondence for accuracy and completeness; prepare reporting emails to clients;
    • review of Office Actions for potential Information Disclosure Statements;
    • complete Notice of Allowance review;
    • preparing formal documents and track receipt of executed documents from client;
    • preparing and reviewing appropriate correspondence from foreign associates and to clients regarding new applications, formal requirements, filing details, etc.;
    • uploading, verifying accuracy, and submitting USPTO e-filings via Patent Center;
    • preparing and e-filing PCT applications with the USPTO via Patent Center;
    • recording assignments using USPTO’s EPAS system;
    • reading, prioritizing, route and follow up on incoming client communications, including maintaining secondary docket of reporting, official, and client deadlines, and proactively coordinating with attorneys to address those deadlines;
    • verifying the completeness of instructions received from clients and request additional information where necessary; and
    • preparing response to client inquiries and reporting the status of various cases>

In addition, the Patent Specialist will generally support the firm’s patent practice by:

  • utilizing quality control measures to produce error-free work consistently and efficiently
  • independently and efficiently prioritizing workflow, and maintain an organized task schedule, including working in advance of deadlines
  • maintaining and closely following client and practice support procedures;
  • maintaining electronic files in accordance with firm standards, including storing a true copy of filings in electronic Worldox files;
  • periodically providing backup support;
  • performing special projects as assigned;
  • periodically assisting with large file transfer, assignment, and/or power of attorney projects; and
  • working collaboratively with the firm’s docketing department to keep them informed regarding the status of impending deadlines, and provide accurate and timely information to close deadlines.

About You

  • At least one year of recent patent legal secretarial experience in a law firm setting.
  • Advanced Microsoft Office skills, typing at 65+ WPM, and impeccable attention to detail.
  • Technical expertise; ability to learn new systems quickly and independently.
  • Ability to multi-task, manage multiple priorities, and work collaboratively in a team environment.
  • Preferred experience with Foundation IP, AppColl, Worldox, and/or Anaqua.
  • Positive attitude toward client service and support of assigned teams.
  • Enjoy working in a fast-paced office environment during “core” business hours.
  • Forward-thinking self-starter with commitment to success and personal professional growth.
  • Outstanding organizational, interpersonal and professional service skills (written and verbal).
  • Enjoy being involved in all aspects of a growing and changing law firm environment.

About BoMc

We are a dedicated and friendly team that enjoys our work. It shows in the quality of our work, and it’s recognized. Vault.com named us its 2023 #2 Best Midsize Law Firm to Work For, which includes top rankings across key benchmarks for “diversity,” “satisfaction,” “firm culture,” and “quality of work.” The Washington Post also named us one of its 2022 Top Workplaces. We offer:

  • competitive compensation and benefits;
  • a respectful, collegial environment centered around diversity, teamwork, trust, and humility;
  • accommodations for completely remote, hybrid, and in-office working situations;
  • flexible schedule around core business hours; and
  • regular firm events.

Apply to be a Patent Specialist

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