COMPANY PROFILE:
Our client is a large, internationally recognized law firm with deep roots in technology and venture capital work, representing emerging companies from formation through exit. The firm maintains strong corporate, M&A, private equity, intellectual property, cybersecurity and privacy, securities, and litigation practices, with a collaborative, entrepreneurial culture and strong support for attorney development and wellbeing.
FEATURES AND BENEFITS of our Client
Our client offers a competitive compensation and benefits package based on experience and location. This is a fully remote role, with preferred working hours of 9:00 a.m. to 6:00 p.m. PT. The firm invests in training on its dedicated software platforms and fosters a collaborative, team-oriented culture with an emphasis on quality and professionalism.
THE ROLE YOU WILL PLAY:
- Provide coverage and support during late evening hours to ensure timely assistance for urgent US patent filings and requests
- Coordinate with patent business professionals, patent practitioners, and clients on assigned US patent prosecution matters
- Manage incoming filing requests and prepare, review, and upload all US patent prosecution filings with the USPTO, including applications, responses to PTO actions, petitions, terminal disclaimers, and issue fee payments
- Prepare and file US formalities and non-substantive USPTO documents, such as powers of attorney, assignments, declarations, and filing receipts
- Prepare draft amendments and responses to official actions, obtain identified references, and process notices of allowance
- Complete Office Action and Notice of Allowance review forms and related paperwork, including extensions, RCEs, and corrected ADSs
- Proof letters patent and generate quality control checklists for draft filing documents
- Provide client support for portfolio management, including client-specific reporting and responses to client inquiries
- Communicate with the assigned Patent Prosecution Specialist on IDS filing timing and report filed IDSs to the client
- Perform quality control reviews of US patent filings, triage incoming filings for QC review, and collaborate with the IP Quality Control Manager to improve QC processes
BACKGROUND PROFILE:
- Relevant IP patent prosecution experience
- Proficiency in the Microsoft Office suite, iManage, and other firm applications following orientation
- Availability to work overtime as required
- Bachelor’s degree preferred
- Previous law firm experience preferred
- Experience researching IP status in PTO databases preferred (USPTO Patent Center, WIPO Patentscope and Madrid Monitor, EPO Patent Register, EUIPO eSearch)
- Working knowledge of USPTO procedures, 37 C.F.R., and the Manual of Patent Examining Procedure (MPEP) preferred
- Excellent attention to detail and strong written and verbal communication skills
- Ability to organize, prioritize, and manage multiple priorities with sound judgment
- Collaborative team player who maintains confidentiality and professionalism at all times
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.”
