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Patent Specialist

Dallas, TX, US Denver, CO, US Oakland, CA, US

Nov 15, 2022

Dentons US LLP is currently seeking a Patent Specialist who will support the Intellectual Property & Technology practice group.  The Patent Specialist will be responsible for supporting activities related to application formalities, preparing and filing correction of inventorship with the USPTO, coordinating requests to update inventorship in foreign jurisdictions, and tracking status of formal documents.  The Patent Specialist a primary point of contact for outreach to inventors in accordance with procedures set by client outside counsel guidelines and department standard operating procedures. This position can be based in any of our U.S. office locations, but preferably in Northern California.

 

Responsibilities

  • Assist the Patent Operations Specialist with monthly shipment of formal documents to inventors with special contact guidelines.
  • Prepare formal documents including Assignments, Declarations, Substitute Statements and other documents as required in foreign jurisdictions.
  • Send formal documents to inventors for signature in accordance with guidelines and procedures.
  • Track receipt of formal documents and follow up with inventors until all signatures are received.
  • Respond to client’s monthly report regarding status of formal documents.
  • Record Assignments and file Declarations with the USPTO.
  • Prepare correction of inventorship pursuant to patent office rules, including preparation and filing of corrected ADS for Correction of Inventorship in US applications, preparation and filing of 92bis requests in PCT Applications, and coordinating notary and legalization of documents as required in foreign jurisdictions.
  • Ensure firm docketing software accurately notes the status of Assignments and Declarations
  • Update inventor lists in client IPMS.
  • Maintain information contained in our Master Inventor List.
  • Maintain file integrity, both the electronic and paper files.
  • Assist with miscellaneous client-related projects.
  • Other duties may be assigned to fully meet the requirements of the position.

 

Qualifications

  • Bachelor’s degree or previous patent legal experience preferred.
  • Excellent communication, grammar, spelling, and written English composition skills.
  • Possess high level of accuracy, attention to detail, and excellent proofreading skills.
  • Maintain and handle confidential and sensitive information with discretion.
  • Strong organizational skills; ability to work under pressure, work within competing deadlines, and prioritize workload effectively.
  • Knowledge of PCT patent rules and procedure; knowledge of national laws of other countries; knowledge of Paris Convention and deadlines set therein preferred.
  • Knowledge of the USPTO website, including PAIR, EFS and EPAS and related websites preferred.
  • Above average working knowledge of Microsoft Outlook, Word, and Excel.  Experience with iManage, Adobe Acrobat Pro, Inprotech, First to File a plus.
  • Strong technical aptitude, including the ability to quickly learn new applications.
  • Availability to work overtime and flexibility regarding work schedule required.
  • Serve as a back-up to team members as required.

 

Salary Range - Denver Only:  $70,000 - $85,000 DOE

Dentons offers a competitive salary and benefits package.

 

Dentons US LLP is an Equal Opportunity Employer of Individuals with Disabilities and Protected Veterans. We are an Affirmative Action Employer. Pursuant to local ordinances, we will consider for employment qualified applicants with arrest and conviction records.

 

About Dentons

Dentons is the world's largest law firm, connecting talent to the world's challenges and opportunities in more than 75 countries. Dentons' legal and business solutions benefit from deep roots in our communities and award-winning advancements in client service, including Nextlaw, Dentons’ innovation and strategic advisory services. Dentons' polycentric and purpose-driven approach, commitment to inclusion and diversity, and world-class talent challenge the status quo to advance client and community interests in the New Dynamic. www.dentons.com


Nearest Major Market: Dallas
Nearest Secondary Market: Fort Worth