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Contract IP Specialist

San Diego, CA

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 a Contract IP Specialist to  join their team.

Title: Contract IP Specialist
Location: Hybrid- San Diego, CA

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:
  • Prepare and finalize all documents required for filing provisional, non-provisional, and PCT patent applications.
  • Draft and file formal documents including assignments, declarations, and powers of attorney, and record with the USPTO.
  • Prepare and file responses to office actions, restriction requirements, preliminary amendments, and other prosecution documents.
  • Track and review dockets for both U.S. and foreign deadlines, ensuring timely actions and communication.
  • Prepare and submit Information Disclosure Statements and associated documents.
  • Coordinate with outside vendors for drawings, certified copies, and translations.
  • Correspond with clients regarding application status, filing receipts, publication notices, and patent certificates.
  • Retrieve and analyze data from USPTO systems (PAIR) and conduct other patent-related research.
  • Assist attorneys with administrative tasks including matter openings, engagement and waiver letters, billing support, and time entries.
  • Stay up to date with changes to MPEP and USPTO rules to ensure compliance and accuracy in all filings.
  • Provide general support for portfolio management and team operations.
  • Perform other administrative tasks and special projects as assigned.

Requirements:
  • Minimum of 3 years of administrative or IP legal support experience in a law firm or professional services setting.
  • Patent prosecution experience required, including familiarity with USPTO procedures and electronic filing systems.
  • Strong proficiency in Microsoft Word, Excel, and Outlook; familiarity with billing (e.g., Webview) and docketing software (e.g., Pattsy) is a plus.
  • Excellent communication skills, professional judgment, and the ability to work both independently and collaboratively.
  • Proactive approach to managing dockets and deadlines, and keeping attorneys on track.
  • Strong organizational and multitasking abilities in a fast-paced, deadline-driven environment.
  • Detail-oriented with a commitment to producing timely and accurate work.
  • Dependable, punctual, and motivated to contribute to a high-performing team.
Education: 
  • High School diploma or GED required; college coursework or degree preferred.

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