US Filing Specialist (SF)
Morrison & Foerster - San Francisco, CA

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Department

Patent Support

Schedule

Monday through Friday, 9:00 a.m. to 5:30 p.m.

Reporting Relationship

Patent Practice Support Supervisor

Responsibilities

Under minimal direction, performs complex and specialized work related to the specific function of providing patent prosecution support for clients to whom assigned. Provides organizational and substantive support for assigned clients. Responsibilities include providing client support for portfolio management, filings with the U.S. Patent and Trademark Office (USPTO), Redbooking deadlines and Docketing. Responsible for monitoring and expediting workflow for assigned clients. Ensures client services and satisfaction are attained in all areas of position.

Essential Functions

Client Service
1. Consistently promote and model the Firm's Client Service Principles in teamwork, work product, and personal interaction.
2. Ensure exemplary client service to all internal and external clients; proactively promote client service throughout department and among teams; respond to peer requests with recognition that request serves a client or Firm need.
3. Regularly review client service procedures and standards related to the position; identify and implement improvements and enhancements to client service.

Primary Responsibilities
1. Applying detailed knowledge of patent prosecution, manage all aspects of administrative patent prosecution support for U.S. patent matters of assigned clients.
2. Develop and maintain strong relationships with assigned clients to deliver responsive and appropriate client service. Anticipate future requests based on understanding of client business needs.
3. Maintain Redbook and review electronic Weekly Docket for assigned clients; proactively communicate with and remind practitioners of due dates; review Daily Dockets and attend to pertinent entries with Docket Department.
4. Utilizing expertise of the patent practice and adhering to USPTO procedures and firm policies and protocols, timely create and file accurate and comprehensive USPTO submissions, including Information Disclosure Statements. May also be responsible for ensuring compliance with reporting requirements for prior art in international cases.
5. In support of managing client portfolios, process incoming mail related to U.S. patent prosecution and report USPTO correspondence to clients.
6. Apply specialized knowledge of client preferences to assemble, establish, maintain and adhere to specific guidelines for assigned clients.
7. Respond to client inquires regarding routine patent portfolio matters and provide status reports to clients upon request.
8. Provide back-up support for colleagues to complete overflow work.
9. Proactively mentors and regularly assists with training junior staff in department.
10. File loose documents and emails relating to U.S. patent prosecution.
11. Submit New Business Memos for new applications.
12. Assist with initiating client file transfers and disengaging clients.
13. Review vendor invoices for assigned clients and process for payment by accounting.

Professional Development
1. Remain current in industry trends in patent prosecution and the legal profession.
2. Ensure expertise in technology relevant to the position; proactively use most current technology to further teamwork, client service, and efficiency.
3. Ensure client service and performance consistently meet Career and Compensation Management Program (“CCMP”) expectations for Matrix Level 4.
4. Regularly review position against Matrix expectations and develop goals to further increase position value.

Confidentiality
Ensure compliance with the Firm's Confidentiality Policy, including safeguarding confidential and personal information, and reporting any suspected breach appropriately and immediately.

Safety Practices
Adhere to the Firm’s General Safety Practices and any unique safety practices for department and building.

Other Duties

Other duties as assigned.

Qualifications

Education and Experience
1. Bachelor’s degree or previous patent legal experience preferred.
2. A minimum of 2 years of progressive patent experience required.

Teamwork and Applied Skills
1. Ability to take an assignment from inception to completion with minimal supervision or by following broad guidelines to deliver positive results.
2. Detailed and advanced knowledge of USPTO procedures and keeps abreast of 37 C.F.R. and Manual of Patent Examining Procedure (MPEP) rules.
3. Detailed and advanced knowledge of the USPTO website, including PAIR, EFS and EPAS and related websites.
4. High level of accuracy, attention to detail, and excellent proofreading skills to deliver a zero-defect work product.
5. High client service ethic and a proven record in delivering exemplary client satisfaction to external and internal client constituencies.
6. Excellent communication, grammar, spelling, written English composition and math skills.
7. Strong organizational skills; ability to work under pressure, work within competing deadlines and prioritize workload effectively.
8. Ability to resolve concerns constructively, directly and respectfully.
9. Ability to assess risk management issues and understanding when to seek appropriate assistance.
10. Proficient in essential software programs related to functions (i.e., IP DAS, Inprotech, FileSurf, Ework, etc.); MS Word; and, Outlook. Basic knowledge of MS Excel and MS PowerPoint.
11. Strong technical aptitude and understanding, including ability to quickly learn new applications.
12. Availability to work overtime and flexibility regarding work schedule required.
13. Typing speed of 70 wpm preferred.

Availability

Available Immediately

How to Apply

Apply online.

Morrison & Foerster is not accepting resumes or referrals from agencies. If you are a recruiter, search firm, or employment agency, you will not be compensated in any way for your referral of a candidate even if Morrison & Foerster hires the candidate.

Recruiting Contact

Staff Recruiting
Morrison & Foerster LLP
425 Market Street
San Francisco, CA 94105

EEO Statement

Morrison & Foerster is an equal opportunity/affirmative action employer.

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