Patent Practice Specialist II

Position : Patent Practice Specialist II

Location : Del Mar (preferred), San Francisco, Silicon Valley, CA (Hybrid, 3 days onsite)

Pay : $75,000 to $115,000 annually

Experience : 3+ years’ experience of patent prosecution and US and foreign filings in a law firm to support life sciences and healthcare IP attorneys, patent agents, and paralegals.

Education : A high school diploma or equivalent is required. A bachelor's degree or some college is preferred.

Type : Full-time; Direct Hire

Schedule : Day Shift, 9 : 00am to 5 : 30pm (Overtime flexibility)

Kent Daniels & Associates is seeking a Patent Practice Specialist II to join our dynamic law firm client!

Job Description :

• Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, track applications and act upon all incoming USPTO communications.
• Prepare and file documents with the USPTO, including pre-examination formalities notices, corrective documents, responses to Office Actions, eTerminal Disclaimers, AFCP 2.

0 requests, requests for continued examination, notice of appeals, amendments after allowance, issue fee transmittals, and amendment shells.

• Track / obtain IDS families and references, prepare and file IDS 1449 form / SB08a forms.
• Prepare, send, and track formal documents to inventors / clients for signature.
• Prepare and file documents related to sequence listings.
• Complete notice of allowance checklist, issue fee transmittals, review issued patents / certificates of correction.
• Prepare client patent portfolio summary reports and file PCT applications and act upon 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.
• Send instructions to foreign counsel on direct / 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 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.
• Review actions entered by the Docketing team for accuracy and inform of any discrepancies.
• Review and manage assigned dockets.
• Monitor deadlines, and follow-up with attorneys, agents, and paralegals.
• Prepare and distribute docket or status reports.
• Work diligently to meet the 600 annual billable hours requirement.

Position Requirements :

• Must have proficiency in Windows 10, MS Office (Outlook, Excel, PowerPoint), Adobe Acrobat, Zoom, and Teams, and experience working with a document management system.
• Strong knowledge of U.S., PCT, and foreign patent rules and procedures and of filing in USPTO Patent Center and in WIPO ePCT is required.
• Possess excellent spelling, grammar, and punctuation skills, strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines.
• Must have excellent technical, organizational, administrative, and communication skills.
• Experience working with life science clients and US and foreign requirements for sequence listing submissions is preferred, but not required.

Kent Daniels & Associates is part of Array Corporation , the leading technology-enabled workforce solutions company whose mission is to fix how labor is bought, sold and delivered to enable universal access to the American Dream.

Qualified applicants with arrest or conviction records will be considered for employment in accordance with the Los Angeles County Fair Chance Ordinance for Employers and the California Fair Chance Act.

We are proud to be an Equal Employment Opportunity and Affirmative Action employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability or veteran status.

Position : Patent Practice Specialist II

Location : Del Mar (preferred), San Francisco, Silicon Valley, CA (Hybrid, 3 days onsite)

Pay : $75,000 to $115,000 annually

Experience : 3+ years’ experience of patent prosecution and US and foreign filings in a law firm to support life sciences and healthcare IP attorneys, patent agents, and paralegals.

Education : A high school diploma or equivalent is required. A bachelor's degree or some college is preferred.

Type : Full-time; Direct Hire

Schedule : Day Shift, 9 : 00am to 5 : 30pm (Overtime flexibility)

Kent Daniels & Associates is seeking a Patent Practice Specialist II to join our dynamic law firm client!

Job Description :

• Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, track applications and act upon all incoming USPTO communications.
• Prepare and file documents with the USPTO, including pre-examination formalities notices, corrective documents, responses to Office Actions, eTerminal Disclaimers, AFCP 2.

0 requests, requests for continued examination, notice of appeals, amendments after allowance, issue fee transmittals, and amendment shells.

• Track / obtain IDS families and references, prepare and file IDS 1449 form / SB08a forms.
• Prepare, send, and track formal documents to inventors / clients for signature.
• Prepare and file documents related to sequence listings.
• Complete notice of allowance checklist, issue fee transmittals, review issued patents / certificates of correction.
• Prepare client patent portfolio summary reports and file PCT applications and act upon 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.
• Send instructions to foreign counsel on direct / 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 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.
• Review actions entered by the Docketing team for accuracy and inform of any discrepancies.
• Review and manage assigned dockets.
• Monitor deadlines, and follow-up with attorneys, agents, and paralegals.
• Prepare and distribute docket or status reports.
• Work diligently to meet the 600 annual billable hours requirement.

Position Requirements :

• Must have proficiency in Windows 10, MS Office (Outlook, Excel, PowerPoint), Adobe Acrobat, Zoom, and Teams, and experience working with a document management system.
• Strong knowledge of U.S., PCT, and foreign patent rules and procedures and of filing in USPTO Patent Center and in WIPO ePCT is required.
• Possess excellent spelling, grammar, and punctuation skills, strong attention to detail, ability to prioritize tasks, and excellent time management skills to meet deadlines.
• Must have excellent technical, organizational, administrative, and communication skills.
• Experience working with life science clients and US and foreign requirements for sequence listing submissions is preferred, but not required.

Kent Daniels & Associates is part of Array Corporation , the leading technology-enabled workforce solutions company whose mission is to fix how labor is bought, sold and delivered to enable universal access to the American Dream.

Qualified applicants with arrest or conviction records will be considered for employment in accordance with the Los Angeles County Fair Chance Ordinance for Employers and the California Fair Chance Act.

We are proud to be an Equal Employment Opportunity and Affirmative Action employer. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability or veteran status.