Patent Specialist

Job Description

At K&L Gates, we are looking for smart, imaginative and hard-working people with diverse backgrounds, experiences and ideas to join us.  Perhaps our search for talented visionaries and your search for important and impactful work lead to the same place.

The global law firm of K&L Gates LLP is seeking a Patent Specialist to join the Chicago office.  The Patent Specialist will prepare and file new applications with the USPTO, WIPO, and foreign associates, along with all other associated prosecution filings.  The Patent Specialist must possess a command of U.S. and foreign patent prosecution.  The Patent Specialist also performs practice assistant duties to assist one or more attorneys or Patent Agents. Candidates must be self-starters who possess the ability to work independently and as part of a team. Excellent communication skills and a commitment to providing the highest quality client service are strongly preferred.

Essential Duties:
•    Prepare, review, and file USPTO communications including, but not limited to, new applications; Office Action responses, Information Disclosure Statements, assignments and related ownership transfers, and the like
•    Perform a variety of foreign prosecution-related tasks such as preparation and filing of PCT applications and all associated non-U.S. prosecution filings
•    Manage specific clients’ Extranet systems to access and communicate all correspondence, PTO filings, and PTO mail
•    Review daily docket and deadlines
•    Order documents, file histories, certified copies, etc.
•    Maintain current knowledge of IP rules and procedures
•    Assist in other duties/special projects as assigned by supervisor or requested by lawyers
•    Enter national and regional stage and all associated formality requirements specific to each country
•    Prepare and send necessary communications directly to foreign associates in order to manage and maintain foreign prosecution matters
•    Report mail associated with foreign filings to the client
•    Report, issue, and docket in own Outlook calendar soft deadlines (deadlines to provide client recommendation) when reporting foreign mail with a deadline
•    Send reminders to attorneys related to soft deadlines
•    Analyze issued U.S. patents for proper Patent Term Adjustment
•    Provide costs estimates using Global IP Estimator
•    Create letters, legal documents, and memos in Word, spreadsheets in Excel, slide shows in PowerPoint; create and work with tables; create tables of contents; use spell-check and thoroughly proofread content of all documents
•    Enter, edit, and track daily time in the firm’s time entry application according to required deadline
•    In Outlook, manage inbox (creating folders), manage calendar, set-up meetings electronically, manage contacts, work and search in the firm’s document management system and understand and set-up distribution lists
•    Possess working knowledge of the firm’s record management system to store and retrieve hard copy documents, create labels, request folders, store and retrieve electronic documents, and store and retrieve e-mails
•    Assist other secretaries and Patent Specialists with overflow work and provide backup support during vacations, leaves of absence, etc.

ABOUT THE FIRM

K&L Gates is a fully integrated global law firm with approximately 2,000 lawyers across five continents. We have experienced dramatic growth in the past decade and now rank among the largest U.S. based law firms in the world.  We take pride in constantly striving for innovation, imagination and an entrepreneurial spirit. We come up with big ideas and then roll up our sleeves to get the job done, guiding our clients through their most complex issues in a variety of industry sectors and across multiple regions of the world.

The industry recognition the firm has garnered in the past five years emanates from the foundation of a global community aligned on behalf of our clients. The people at K&L Gates are committed to working together to create a legacy for each other, the firm, our clients, and the communities in which we serve. We thrive in an inclusive and socially conscious environment that embraces diversity and takes a holistic approach to the career evolution of all our professionals.

For more information or to view other job opportunities, please click here to go back to our careers page.

Notice: We participate in E-Verify in certain Firm locations for purposes of verifying employment eligibility.

BENEFITS

We offer a dynamic work environment and excellent benefits.

EQUAL EMPLOYMENT OPPORTUNITY

The Firm is an equal opportunity employer. It is the policy of the Firm that employment decisions shall be based on merit, qualifications and competence. Employment practices shall not be influenced or affected by virtue of a person’s race, color, religion, sex, national origin, age, sexual orientation, gender identity or expression, marital status, disability, military status or any other characteristic protected by applicable law. This policy governs all aspects of employment including, without limitation, recruiting, hiring, compensation, benefits, promotion, assignment and dismissal. In addition, it is the Firm’s policy to provide an environment that is free of unlawful harassment of any kind including, without limitation, that which is sexual, racial, age-related, disability-related or ethnic background-related.