Patent Prosecution Specialist
Company: Morgan Lewis
Location: Chicago
Posted on: May 16, 2022
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Job Description:
Morgan, Lewis & Bockius LLP, one of the world's leading
international law firm with more than 4000 lawyers and staff in 30
offices is seeking to hire a Patent Prosecution Specialist
reporting to the Regional Manager, Patent Support Services. This
position will reside in the Chicago, IL office and will be
responsible for support activities related to patent prosecution,
including the preparation and filing of documents with the United
States Patent and Trademark Office, World Intellectual Property
Office International Bureau and foreign national patent offices in
accordance with set guidelines and procedures, and preparation and
filing of documents related to international and foreign national
patent applications. Responsibilities: Prepare of patent
prosecution documents, including transcribing instructions (written
and/or verbal), producing patent applications, correspondence,
reports, memoranda, proofreading and redlining, photocopying,
assembling and distributing. Review and process Filing Receipt,
Notice of Recordation, Office Actions, Notices of Allowance,
Recordation of Assignment, Letters Patent, and Notice of
Publication in accordance with set guidelines and procedures.
Prepare pre-issuance documents, which includes Issue Fee Payments,
and Requests for Recomputations of Patent Term Adjustment Prepare
and file the documents with the USPTO, including Request for Filing
Receipt, Request for Corrected Filing Receipt, Issue Fees, Formal
Drawings and New Patent Applications Prepare non-technical
prosecution documents, including Notices to File Missing Parts,
Notices to File Corrected Application Papers, Inventor Declaration,
Assignment and Power of Attorney Review patent files for processing
and preparation Prepare IDS from international and foreign search
reports Prepare client reporting letters and/or correspondence to
the foreign associates regarding IDS, foreign disclosures, etc.
Analyze PTO-issued documents for accuracy (such as filing receipts,
assignment documents, office actions, etc.) Provide copies of
documents filed to client Monitor patent docket Contact PTO with
status questions Contact patent examiner regarding missing
information Make arrangements with draftsman to correct drawings as
necessary Prepare and file international/foreign national
documents, including PCT Requests and PCT Demands, Responses to PCT
Application inquiries and invitations and National phase
application order letters Possess knowledge of and keep abreast of
rules according to the 37 CFR and MPEP Experience/Qualifications:
Bachelor's Degree, from four-year college or university, preferred,
not required, and a minimum of one year of related experience, or
the equivalent combination of education and experience. To perform
this job successfully, the candidate will be flexible, have the
ability to manage multiple projects within tight deadlines and work
well in a team-oriented environment. Strong organizational,
communication and interpersonal skills a must. Flexibility to work
overtime preferred. You must be fully vaccinated against COVID-19
by your hire date to be eligible for starting in the role. Proof of
vaccination will be required. Morgan Lewis will evaluate requests
for reasonable accommodations on a case-by-case basis, in
accordance with applicable law. Morgan, Lewis & Bockius LLP is
committed to equal employment opportunity and providing reasonable
accommodations to applicants with physical and/or mental
disabilities. We value and encourage diversity and solicit
applications from all qualified applicants without regard to race,
color, gender, sex, age, religion, creed, national origin,
ancestry, citizenship, marital status, sexual orientation, physical
or mental disability, medical condition, veteran status, gender
identity, genetic information, or any other characteristic
protected by federal, state, or local law. Pursuant to applicable
state and municipal Fair Chance Laws and Ordinances, we will
consider for employment qualified applicants with arrest and
conviction records. California Applicants: Pursuant to the
California Consumer Privacy Act, the following link contains the
Firm's California Consumer Privacy Act Privacy Notice for
Candidates which explains the categories of personal information
that we collect and the purposes for which we use such personal
information. CCPA Privacy Notice for Candidates Morgan Lewis &
Bockius LLP is also an equal opportunity employer and all qualified
applicants will receive consideration for employment without regard
to race, color, religion, sex, sexual orientation, gender identity,
national origin, disability status, protected veteran status, or
any other characteristic protected by law. If you are interested in
applying for employment with Morgan Lewis and need special
assistance or an accommodation to use our website or to apply for a
position, please call or email the following contacts: Professional
Staff positions: Please call 888.534.5003 or email
talent.acquisition@morganlewis.com Lawyer/Summer Associate
positions: firmattorneyrecruiting@morganlewis.com Determination on
requests for reasonable accommodation are made on a case-by-case
basis.
Keywords: Morgan Lewis, Chicago , Patent Prosecution Specialist, Other , Chicago, Illinois
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