IP US Filing Specialist
COMPANY PROFILE:
Our client is a large, top-tier international law firm with a well-established Intellectual Property practice. The firm provides full-service patent prosecution support to attorneys, agents, and clients across a broad portfolio of U.S. patent matters, and is recognized for its sophisticated IP services infrastructure, strong internal training, and collaborative, team-oriented culture.
FEATURES AND BENEFITS of our Client
Our client offers a competitive compensation and benefits package, commensurate with geographic location, experience, and skillset, along with a comprehensive range of elective health and wellness benefits, generous paid time off and paid holidays, and strong parental and family support offerings. The role follows a hybrid schedule, balancing in-office collaboration with remote work flexibility, and offers ongoing exposure to experienced patent attorneys, agents, and clients within a professional, detail-oriented team environment.
THE ROLE YOU WILL PLAY:
- Coordinate with IP professional staff, patent practitioners, and clients on assigned US patent prosecution matters
- Analyze correspondence received from the USPTO to ensure docketing accuracy, forward USPTO mail to the client team, and provide timely reminders of upcoming deadlines
- Prepare, review, and file US patent prosecution documents with the USPTO, including applications (utility, design, provisional, nonprovisional, divisional, continuation, and national stage), responses to office actions, petitions, terminal disclaimers, and issue fee payments
- Prepare and file US formalities (e.g., powers of attorney, assignments, declarations, drawings) and non-substantive USPTO documents, including filing receipts and publications, and prepare client reminder letters for upcoming deadlines
- Handle and report substantive USPTO actions under attorney direction, including drafting amendments and responses to office actions, obtaining identified references, processing notices of allowance, addressing inventorship/assignment issues, and preparing related paperwork (extensions, RCEs, corrected ADSs, name changes, maintenance fee addresses, etc.)
- Proof and forward Letters Patent to clients
- Support portfolio management, including client-specific reporting and responding to client inquiries by phone or email
- Maintain working knowledge of US patent prosecution rules and recommend procedural updates as needed
- Maintain a secondary docket of due dates for assigned clients and review docket reports, providing detailed annotations on upcoming dates
- Complete administrative tasks such as maintaining client data rooms, coordinating with the central docketing department, running patent reports, and supporting matter transfers and special projects
- Communicate regularly regarding the timing and filing of Information Disclosure Statements (IDSs), and report filed IDSs to clients
BACKGROUND PROFILE:
- 3+ years of relevant IP experience
- Proficiency in Microsoft Office and standard firm/legal practice applications (training provided during orientation)
- Availability to work overtime as required
- Bachelor's Degree preferred
- Previous law firm experience preferred
- Experience researching IP status and history in PTO databases (e.g., USPTO Patent Center, WIPO Patentscope, EPO Patent Register) and other public jurisdictional databases preferred
- Working knowledge of USPTO procedures, 37 C.F.R., and the Manual of Patent Examining Procedure (MPEP) preferred
- Excellent attention to detail and strong verbal and written communication skills
- Strong ability to organize, prioritize, and coordinate multiple activities with sound judgment
- Collaborative, team-oriented approach with a high level of professionalism
- Unwavering ability to handle and maintain confidentiality regarding firm and client information
ABOUT ABA Search
At ABA, we value professionalism, honesty, and hard work. We are positive, innovative thinkers who use creativity to turn challenges into opportunities. We love to learn and continuously seek new ways to deepen our expertise in the Legal and Life Sciences industries. We are passionate about staffing and committed to the success of our clients and candidates. That is what makes us "the name to know in recruitment."
