The Patent Prosecution Assistant is responsible for all aspects of patent prosecution filings within the practice (both those prepared by others and those from their portfolio), from the initial preparation of required documents and forms through post-issuance, reexamination, and reissue. This role is critical to ensuring compliance with docketed deadlines, quality-assuring filings of timely and appropriate materials on behalf of clients and maintaining current records for patent prosecution matters.

This position is eligible to participate in the firm's flexible work program.

RESPONSIBILITIES/ESSENTIAL FUNCTIONS:

Meet the Firm’s minimum hours’ expectations of 1700 total chargeable hours (client, pro bono, business development/client relations, practice area supervision/support, and/or professional development) annually, recording all time entries daily in timekeeping system
Prepare draft template responses for applications
Routinely review USPTO, WIPO, and foreign PTO rule and filing system changes, summarize for team and attorneys, and update internal processes to ensure compliance
Prepare and e-file patent prosecution documents (application data sheets, assignments, declarations, IDS, powers of attorney, 3.73 statements, PCT requests, 371 national stage applications, etc.) and other correspondence with the USPTO, WIPO, and PTAB
Prepare and report Patent Office communications to the client
Prepare filing and prosecution instructions to foreign associates for national phase applications and review and respond to inquiries from the client and foreign associates
Maintain and review daily and weekly docket reports and follow up with attorneys to ensure that actions are completed timely
Record and monitor deadlines for responses to USPTO and foreign PTO communications
Contact the USPTO and foreign associates regarding actions, inquiries, and status updates
Prepare required formal documents for execution by the inventors and applications for submission to the USPTO and foreign PTO
Create, update, and maintain patent prosecution electronic and paper files
Maintain electronic and physical files and prepare for storage (NetDocs/FileTrail/LegalKey)
Troubleshoot software issues with the IS Department and the USPTO technical department
Meets the department’s expectations to retrieve, read and/or respond to firm and client-related e-mail messages during and outside of core business and scheduled work hours by connecting a personal mobile device (smartphone or tablet with a data plan) to the firm’s network

KNOWLEDGE, SKILLS, AND ABILITIES:

Expertise with USPTO electronic systems (e.g., public and private PAIR, EFS-Web, PTAB E2E, MyUSPTO) and with WIPO software and electronic systems (e.g., PCT-Safe, ePCT)
Demonstrated knowledge and understanding of U.S. Patent and Trademark Office rules and regulations and proficiency in preparing patent prosecution documents in a timely manner
Familiarity with the filing procedures for all aspects of patent prosecution, and foreign and international (PCT) prosecution
Strong knowledge of patent and litigation terminology
Familiarity with IP docketing software (e.g., Foundation IP)
Strong interpersonal and communication skills with ability to work in a high-volume, high-energy environment and build and maintain positive and collaborative working relationships
Ability to communicate professionally and effectively, both orally and in writing
Demonstration of exceptional attention to detail and accuracy
Strong proficiency with office productivity technologies and advanced capability with MS Office (Word, Excel, Outlook, PowerPoint) and Adobe Acrobat; aptitude for learning software solutions and other technologies
Ability to manage multiple requests, assess priorities, and achieve solutions under tight deadlines
Possess problem-resolution abilities that appropriately combine logic, flexibility, creativity, follow-through, and client services skills with an emphasis on discretion and diplomacy
Maintenance of strict confidentiality of work-related information and materials
Strong research skills, including use of internet and relevant database resources
Demonstrated self-starter who shows ownership and commitment to perform responsibilities with high professional standards
Flexibility and willingness to respond to issues during and outside of core business hours

EDUCATION AND EXPERIENCE:

Bachelor’s degree or equivalent work experience required. Paralegal experience a plus.
Minimum five (5) plus years of experience in trademark prosecution and intellectual property prosecution/litigation legal practice, with progressing levels of responsibility throughout career

WORK ENVIRONMENT:

Position operates in a professional office environment which is usually quiet to moderate
Position routinely uses standard office equipment such as computers, phones, photocopiers, and filing cabinets
Position requires that the employee be able to multi-task in a fast-paced work environment

PHYSICAL DEMANDS:

While performing the duties of this job, the employee is required to have ordinary ambulatory skills sufficient to visit other locations; and the ability to stand, walk, stoop, kneel, and crouch. Requires good hand-eye coordination, arm, hand, and finger dexterity, including ability to grasp, and visual acuity to use a keyboard, operate equipment and read information. Frequently required to sit, reach with hands and arms, talk, and hear
Ability to carry or lift items weighing up to 10 pounds

This description outlines the basic requirements of this position. It is not intended to be a complete description as other duties may be assigned.

The base salary for this position is expected to be between $98K to $105K annually. Actual salary will be determined based on skills, experience (to the extent relevant) and other job-related factors, consistent with applicable law.

Wiley’s comprehensive benefits package includes medical and prescription drug plan coverage, dental, vision, flexible spending and health savings accounts, life insurance, 401(k) retirement plan with firm discretionary contribution, generous paid time off (PTO) package plus ten firm paid holidays, access to state of the art on-site fitness facilities and locker rooms and wellness programming, paid parental leave and subsidized backup child/elder care, and more.

Wiley is an Equal Opportunity Employer with a strong commitment to the achievement of excellence, diversity and inclusion. All qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity or expression, national origin, age, disability, protected veteran status, or any other characteristic protected by law.

**This Organization Participates in E-Verify. This employer will provide the Social Security Administration (SSA) and, if necessary, the Department of Homeland Security (DHS), with information from each new employee’s Form I-9 to confirm work authorization. Employers may not use E-Verify to pre-screen job applicants and may not limit or influence the choice of documents you present for use on the Form I-9.

Wiley Rein LLP

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Patent Prosecution Assistant