Patent Practice Specialist II - Sheppard Mullin Richter & Hampton LLP
San Francisco, CA 94111
About the Job
Sheppard, Mullin, Richter & Hampton LLP, a global Am Law 50 firm, is currently seeking a Patent Practice Specialist II.
We prefer candidates who can work from our San Francisco, Silicon Valley, or Del Mar office but will consider other candidates who can work from one of our other California offices.
The other offices we are considering are Century City, Downtown Los Angeles, Orange County, and Downtown San Diego. There is only one opening.
Sheppard Mullin is hiring an experienced, well-organized Patent Practice Specialist II to support life sciences and healthcare IP attorneys, patent agents, and paralegals in all aspects of patent prosecution. This includes assisting with daily workflow on conducting research, preparing and filing legal documents, communicating with clients and government agencies, and maintaining accurate records. The job requires knowledge of U.S. and Foreign patent prosecution rules and procedures. Technical, organizational, and administrative skills are necessary to handle various duties and responsibilities outlined below. The position handles multiple projects, often in a fast-paced, high-pressure environment, requiring prioritization and flexibility. Collaboration with firm personnel at all levels is integral to the role. The ideal candidate will have at least 3-5 years’ experience in patent prosecution and US and foreign filings.
We prefer candidates who can work from our San Francisco, Silicon Valley, or Del Mar office but will consider other candidates who can work from one of our other California offices.
The other offices we are considering are Century City, Downtown Los Angeles, Orange County, and Downtown San Diego. There is only one opening.
Sheppard Mullin is hiring an experienced, well-organized Patent Practice Specialist II to support life sciences and healthcare IP attorneys, patent agents, and paralegals in all aspects of patent prosecution. This includes assisting with daily workflow on conducting research, preparing and filing legal documents, communicating with clients and government agencies, and maintaining accurate records. The job requires knowledge of U.S. and Foreign patent prosecution rules and procedures. Technical, organizational, and administrative skills are necessary to handle various duties and responsibilities outlined below. The position handles multiple projects, often in a fast-paced, high-pressure environment, requiring prioritization and flexibility. Collaboration with firm personnel at all levels is integral to the role. The ideal candidate will have at least 3-5 years’ experience in patent prosecution and US and foreign filings.
Primary Responsibilities and Expectations
- Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, and track one applications.
Review, process, and act upon, where applicable, all incoming USPTO communications. - Prepare and file documents with the USPTO, including responses to USPTO pre-examination formalities notices, corrective documents, responses to Office Actions, e-terminal disclaimers, AFCP 2.0 requests, requests for continued examination, and notice of appeals, amendments after allowance, issue fee transmittals, etc.
- Prepare amendment shells.
- Track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms.
- Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO.
- Prepare and file documents related to sequence listings.
- Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review and proof certificates of correction.
- Prepare client patent portfolio summary reports
- Contact the USPTO regarding the status of applications.
- Prepare and file PCT applications.
- Review, process, and act upon, where applicable, all incoming PCT communications.
- Prepare and file with US Receiving Office or International Bureau rule 92bis requests, responses to Invitations from the RO or IB, article 19 and 34 amendment and demands, etc.
- Prepare, coordinate, and send instructions to foreign counsel on direct and/or national stage filings.
- Monitor and follow-up with foreign counsel on deadlines to ensure timely completion and filing of outstanding actions.
- Coordinate with outside vendors and foreign counsel to ensure appropriate legalization through completion of filing.
- Prepare cost estimates for filing of foreign applications.
- Review and proof, when applicable, patent certificates and forward to clients.
- Submit conflict checks and open new matters, including preparation of engagement letters and management of client and case documents.
- Ensure that client matter numbers are opened according to the Firm’s guidelines.
- Maintain working knowledge of client guidelines, procedures, and preferences. Prepare filing documents and client correspondence in alignment with these procedures.
- Review actions entered by the Docketing team for accuracy and inform Docketing of any discrepancies.
- Review and manage assigned dockets.
- Monitor deadlines, and follow-up with attorneys, agents, and paralegals in a timely manner.
- Prepare and distribute docket or status reports as directed.
Essential Job Functions
- Assist the team with daily workflow tasks and projects in a high volume, fast paced practice while timely identifying and prioritizing time sensitive matters.
- Work closely with attorneys, patent agents, paralegals, and practice specialists to prepare and file official correspondence using the Firm’s standards and procedures.
- Maintain client files, enter time, submit expense reports, process case-related invoices.
- Proactively manage casework and assignments, ensuring all deadlines are met in a timely manner. Communicate docket updates to Docketing.
- Work diligently to meet the annual billable hours requirement.
- Must be available and able to work during core business hours.
- Attend and actively participate in all training programs suggested by the Director of IP Administration, the IP Manager, and Office Administrator.
- Contribute to the overall success of the Firm by performing other administrative and support duties as assigned.
Required Qualifications:
- A minimum of 3-5 years of patent prosecution experience in a law firm.
- Strong knowledge of U.S., PCT, and foreign patent rules and procedures.
- Strong working knowledge of filing in USPTO Patent Center and preparing and/or filing in WIPO ePCT.
- Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
- Ability to work independently and within a team environment.
- Possess excellent spelling, grammar, and punctuation skills.
- Strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines.
- Clear and concise communication skills
- Ability to work overtime, evenings, and weekends, as needed.
- Experience working with life science clients and US and foreign requirements for sequence listing submissions is preferred, but not required.
Education and/or Experience
A high school diploma or equivalent is required, plus substantial and relevant work experience. A bachelor's degree or some college is preferred.
A high school diploma or equivalent is required, plus substantial and relevant work experience. A bachelor's degree or some college is preferred.
Computer/Software Knowledge
Must have proficiency in Windows 10, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, and Teams, and experience working with a document management system. Must be able to quickly learn new skills and systems.
Must have proficiency in Windows 10, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, and Teams, and experience working with a document management system. Must be able to quickly learn new skills and systems.
Work Environment
- The current Firm policy is hybrid–working in the office a minimum of 3 days per week and working from home the rest of the week (subject to change).
- Overtime may be required as the job duties demand.
California: The pay range for this position is $26.00 to $62.00 per hour.
We will consider qualified applicants with criminal histories in a manner consistent with all applicable federal, state, and local laws, including the San Francisco Fair Chance Ordinance and the Los Angeles Fair Chance Initiative for Hiring Ordinance.
Sheppard Mullin is an equal opportunity employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity and/or expression, national or ethnic origin, ancestry, citizenship, age, marital status, protected medical condition, physical or mental disability, veteran status, or any other characteristics protected by law.
Req: #2024-3201
#LI-CD1 #LI-Hybrid #LI-Associate #LI-Fulltime
Source : Sheppard Mullin Richter & Hampton LLP