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.

We are seeking a Patent Specialist to join the Orange County 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/or foreign patent prosecution.  The Patent Specialist also performs legal secretarial duties to assist one or more attorneys or Patent Agents.

ESSENTIAL DUTIES
• Prepare, review, and file PTO communications including, but not limited to, new applications; Office Action responses, Information Disclosure Statements, assignments and related ownership transfers, and the like
• 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
• Perform a variety of foreign prosecution-related tasks such as preparation and filing of PCT applications and all associated non-U.S. prosecution filings
• 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
• Review daily docket and deadlines
• Analyze issued U.S. patents for proper Patent Term Adjustment
• Use patent analytical software to research and compile worldwide patent portfolio data
• Provide costs estimates using Global IP Estimator
• Order documents, file histories, certified copies, etc.
• Maintain current knowledge of all foreign IP rules and procedures
• Assist in other duties/special projects as assigned by supervisor or requested by lawyers
• 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
• Work with attorneys and other legal secretaries in reviewing and editing proformas and work with Accounting to finalize and submit client invoices on a timely basis
• 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
• Prepare preparation of check requests and firmwide expense reports accurately and promptly
• Possess knowledge of and apply high level of detail to file openings and conflict checks using the firm’s online file opening system
• 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.
• Coordinate and verify travel arrangements with our service providers and process related business expense reimbursements
• Schedule meetings, book conference rooms, video conferences and Webexes

EXPERIENCE SKILLS REQUIRED
• High school diploma or equivalent; college degree preferred
• Knowledge and understanding of Intellectual Property basic legal terminology
• Ability to concentrate for lengthy periods of time while maintaining a focus on detail
• Ability to handle multiple tasks and routine responsibilities on a daily basis and a willingness to make judgment decisions
• Ability to balance the initiative with level of knowledge, a willingness to follow instructions and the responsibility of bringing any problems, concerns, or discrepancies to the attention of the supervising attorney or paralegal
• Ability to communicate effectively with a varied audience, including all levels of firm members, vendors, clients, and other outside interested parties

ADDITIONAL ABILITIES REQUIRED
• Must be able communicate and interact effectively with employees and/or other clients
• Effectively manage and communicates confidential issues
• This job operates in an office setting and is largely sedentary, requiring the routine use of a computer and other standard office equipment.  The ability to open file cabinets, lift files, bend, and stand on a stool may also be required.

Compensation Salary $61,000 - $115,000

The compensation salary for this position will be determined during the interview process and will vary based on multiple factors, including but not limited to prior experience, relevant expertise, current business needs, and market factors.

In accordance with the Los Angeles Fair Chance Ordinance and the California Fair Chance Act, qualified applicants with arrest and conviction records will be considered.

ABOUT THE FIRM

K&L Gates is a fully integrated global law firm with lawyers located across five continents in more than 40 offices. 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 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.

It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment. An employer who violates this law shall be subject to criminal penalties and civil liability.

BENEFITS

K&L Gates offers our personnel a comprehensive suite of benefits to help meet your needs now and in the future. Depending on your eligibility, options for full-time personnel include:

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 will not be influenced or affected by virtue of a person’s race (including traits associated with race, including hair texture and protective hairstyles such as afros, braids, locks, and twists), religion, creed, color, national origin, ancestry, citizenship, physical disability, mental disability, medical condition, genetic information, marital status, sex, pregnancy, childbirth, breastfeeding, gender, parental status, gender identity, gender expression, sexual orientation, age, familial status, domestic violence victim status, military and veteran status, or any other characteristic protected by applicable federal, state, or local 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 prohibited harassment of any kind including, without limitation, that which is based on sex, race, age, disability, ethnic background, or any other category protected by law (including the categories listed above). The Firm complies with federal and state disability laws and makes reasonable accommodations for applicants and employees with disabilities. If you require reasonable accommodation in completing this application, interviewing, or otherwise participating in the employee selection process, please contact askHR@klgates.com.