Our client is a leading global business law firm looking for a collaborative, results-oriented individual who enjoys working in a fast-paced environment and has exceptional problem-solving skills. Naviga has been engaged to recruit  an IP Specialist to  join their team.

Title: IP Specialist
Location: Hybrid- Pittsburgh, PA

Key Notes/Company Details:

• Headquartered in both Chicago, IL and London, England.
• Multi-Billion Dollar Business, Employing over 3600 Lawyers
• Culture includes individuals of high standards, providing support and collaboration throughout the business
• Work with a reputable global firm known for its excellence in professional services.

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 the 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, requests 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 sets.
• 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 statements 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.

Requirements:

• 3 years experience office/administrative experience in a professional services and/or legal industry with patent prosecution experience 
• 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
• Have proven administrative abilities, excellent judgment, and the ability to handle multiple time-sensitive tasks in a fast-paced environment
• Punctuality is a must
• 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

Education: 

• High School Diploma or GED

Benefits:

• Medical, Dental and Vision Insurance 
• Health savings account (HSA)
• Flexible spending account (FSA)
• Commuter spending account
• Basic life and accidental death & dismemberment insurance (AD&D)
• Short Term and Long Term Disability coverage
• Guide+Thrive (EAP)
• Critical illness insurance
• 401(k) and Profit sharing plan
• PTO and Holiday 
• Plus much more!