IP US Filing Specialist (Late Filings)
Cooley LLP
Job Description
IP US Filing Specialist (Late Filings) Cooley is seeking an IP US Filing Specialist (Late Filings) to join the IP Services team. Preferred work hours are Mountain Time: 10 a.m. – 7 p.m. or Pacific Time: 9 a.m. – 6 p.m. Position Summary The IP US Filing Specialist (USFS) (Late Filing) provides full support to patent specialists and practitioners in filing and maintaining U.S. applications and patents.
The role focuses on late‑evening coverage, ensuring timely assistance for urgent U.S. filings and performing quality‑control functions to meet firm and USPTO requirements. Position Responsibilities Coordinate with patent business professionals, practitioners, and clients regarding assigned U.S. patent prosecution matters. Manage incoming filing requests and tasks, including document preparation and project work, and meet established deadlines within the software platform.
Analyze correspondence from the USPTO to ensure information accuracy. Prepare and review required documents for filing, upload filings to the USPTO (applications, responses, petitions, disclaims, issue fee payments, etc.). Prepare, file, and report U.S. formalities such as POAs, assignments, declarations, drawings, and non‑substantive documents.
Draft reports for substantive USPTO actions and prepare amendments/responses to official actions. Complete office‑action and notice‑of‑allowance review forms, manage inventorship/assignment issues, and prepare related paperwork (extensions, RCEs, corrected ADSs, name changes, maintenance fees, etc.). Generate draft QC checklists, proof letters for patents, and review issued claims and bibliographic information.
Provide portfolio‑management support, tailor reporting to client guidelines, and respond to client communications. Maintain knowledge of U.S. patent prosecution rules and recommend procedural modifications. Perform administrative tasks to support U.S. filing specialists.
Communicate with the assigned Patent Prosecution Specialist regarding filing timing and reporting. Conduct quality‑control reviews of U.S. patent filings to ensure compliance with firm and USPTO standards. Triangulate and prioritize incoming filings for QC review and communicate turnaround times.
Collaborate with the IP Quality Control Manager and team members to improve QC processes. Maintain high QC standards, proactively identifying and correcting errors. Apply the firm’s risk‑management directives to all late‑evening filings.
Designations & Experience Levels Trainee (2+ years relevant IP experience): Performs the same responsibilities with close supervision and a reduced volume of work. Non‑Senior (3+ years relevant IP experience): Manages a regular workload independently. Senior (5+ years relevant IP experience): Leads by example, takes on special projects, mentors junior colleagues, and supports team initiatives.
Skills and Experience – Required Proficiency in Microsoft Office, iManage, and other firm applications. Availability to work overtime as required. Relevant IP experience (see minimum years by level).
Skills and Experience – Preferred Bachelor’s degree. Previous law firm experience. Experience researching IP status and history in PTO databases, including USPTO systems (Patent Center), WIPO Patentscope, Madrid Monitor, EPO Patent Register, EUIPO eSearch, and other public databases.
Working knowledge of USPTO procedures, 37C.F.R., and MPEP rules. Competencies Excellent attention to detail. Strong verbal and written communication skills.
Organizational, prioritization, and coordination abilities. Sound judgment. Team‑player with collaborative spirit.
Ability to handle confidential information discreetly. High level of professionalism at all times. Compensation & Benefits Hourly pay range: $43.50 – $63.00 ($90,480 – $131,040 annually).
Competitive compensation and comprehensive benefits package. Medical, vision, dental, HSAs, FSAs, pre‑tax commuter benefits, life insurance, AD&D, long‑term care, backup care, and other dependent care options. Firm‑paid life insurance, AD&D, LTD, and short‑term medical benefits. 20 days of Paid Time Off (PTO) and 10 paid holidays per year.
Generous parental leave and fertility benefits. Benefit orientation for new employees. #J-18808-Ljbffr