Patent Specialist - PTAB

Bookoff McAndrews, PLLC • Full-time • Washington, DC, US • $75k - $90k / year • 1d ago

Job Summary: BoMc is seeking a Patent Specialist with 3+ years of experience to join our patent specialist team. The ideal candidate will provide support to attorneys, agents, and specialists in all phases of patent prosecution and Patent Trial and Appeal Board (PTAB) proceedings. This role requires strong organizational skills, attention to detail, and a thorough understanding of PTAB processes, filings, and deadlines.The candidate must be available to work physically in the office during PTAB filings to ensure timely and accurate submissions.

Key Responsibilities:

PTAB Proceedings
- Assist in the preparation and filing of documents for PTAB proceedings, including Inter Partes Reviews (IPRs), Post Grant Reviews (PGRs), and appeals
- Thorough proficiency with the USPTO PTACTs platform and other PTAB specific procedures
- Manage deadlines for PTAB submissions, coordinating with attorneys and clients to ensure timely filings and service to opposing counsel
- Review and organize case files, ensuring all documentation is complete and accurate
- Track and document case milestones, filings, and correspondence in document management systems
- Serve as a point of contact for attorneys and other team members regarding PTAB-related questions and case statuses.
- Strong communication skills to assist in contacting the PTAB for IPR/PGR specific questions
- Manage and assemble exhibits and evidence for filings and hearings
- Ensure all documents meet formatting, citation, and content requirements as specified by PTAB rules
Patent Lifecycle Management
- Demonstrate comprehensive knowledge of the patent lifecycle, including federal patent rules, regulations, and U.S. and international intellectual property laws (37 C.F.R, MPEP, PCT regulations, foreign country laws, etc.)
- Manage all communications, filings, and documents for assigned clients, assisting attorneys with docket and workload management
- Oversee U.S. and foreign patent applications from filing to grant, including:
  - Preparing and filing patent documents and forms via USPTO and WIPO electronic systems
  - Preparing response shells and reviewing for potential IDS filings
  - Conducting Notice of Allowance reviews and checklists
  - Preparing client reporting emails or uploads to client portals
  - Preparing formal documents and tracking receipt of executed documents
  - Sending deadline reminders to clients
  - Preparing and reviewing correspondence from foreign associates and reporting to clients
  - Verifying and requesting additional client information when necessary
  - Responding to client inquiries and reporting case statuses
Client and Practice Support
- Customize practice support based on client preferences, following specific procedures for assigned clients
- Assist with special projects, such as large file transfers and assignment or power of attorney projects
- Provide backup support to other patent specialists within the team
Quality Control and Workflow Management
- Utilize quality control measures, including spellcheck and checklists, to ensure error-free work
- Prioritize, route, and follow up on incoming client communications, maintaining a secondary docket of deadlines
- Independently prioritize workflow and maintain an organized task schedule
- Collaborate with the docketing department to keep them informed of impending deadlines
- Maintain electronic files in accordance with firm standards
- Engage with clients and team members using discretion and professionalism

Qualifications:

At least 3 years of recent patent legal experience in a law firm setting
Advanced Microsoft Office skills, typing at 65+ WPM, and impeccable attention to detail
Ability to multi-task, manage multiple priorities, and work collaboratively in a team environment
Preferred but not required experience with Foundation IP, AppColl, Worldox, and/or Anaqua
Positive attitude toward service to clients, attorneys, and co-workers
Self-starter with a commitment to success and professional growth
Outstanding organizational, interpersonal, and communication skills

About BoMc:

We are a dedicated and friendly team who enjoys our work. It shows in the quality of our work and it’s recognized. Vault named us its 2024 #1 Best Midsize Firm to Work For which includes top rankings across key benchmarks for “wellness,” "satisfaction," "firm culture," “associate/partner relations” and "quality of work." The Washington Post also named us one of its 2024 Top Workplaces. We offer:

a respectful and collegial hybrid working environment centered around diversity, teamwork, trust, and humility;
ample training and career growth opportunities;
optional periodic firm outings and events;
optional periodic staff appreciation activities; and
a modern and comfortable office space convenient to three Metro Stations in downtown DC, with smart-casual dress code, and access to gym, co-working space, and “Western Market” food hall

Compensation and Benefits:

The good faith base salary range for this position is $75,000 - $90,000 (non-exempt). The actual pay will be based on experience and other relevant factors permissible by law. In addition, we offer: