McGuireWoods LLP

  • Patent Prosecution Specialist

    Job Location US-VA-Tysons
    Category Legal Support
  • Overview

    McGuireWoods has a need for a Patent Prosecution Specialist to join its team in Tysons Corner, VA.  This resource will be responsible for managing U.S. and foreign patent applications from start to finish.  The ideal candidate will have senior-level knowledge of the patent filing process, and some docketing experience with CPI would be a plus. 

     

    McGuireWoods LLP is a major U.S. law firm with offices in the United States and Europe. Tracing the firm's roots back to 1834, McGuireWoods has a long history of growth through mergers with predecessor firms in existing markets, as well as client-centered expansion into new markets. Working with clients to develop these strategies, the firm has kept pace with its clients changing needs -- and helping them meet their goals. This has been the firm's philosophy for more than 175 years, and it continues to direct endeavors as the firm looks toward the future. For more information, please visitwww.mcguirewoods.com.

    Responsibilities

    • Completes filing requirements utilizing USPTO electronic, facsimile and paper filing techniques with Commissioner, United Patent and Trademark Office, including new patent applications for U.S. Provisional/Non-Provisional, U.S. Continuation, U.S. Divisional, U.S. National Stage, Reexamination, Reissue, Design and foreign patent applications entering the U.S.
    • Drafts other patent prosecution documents, including:  Reply and Amendment responses to Non-Final and Final Office Actions, Election/Restriction responses, Preliminary Amendments, Claims for Priority, Requests for Extension of Time, Information Disclosure Statements, IDS Citations, Terminal Disclaimers, Requests for Continued Examination, Notice of Appeals, Appeal Briefs, Issue Fee Transmittals, Submission of Replacement Drawings, Comments on Reasons for Allowance,  Certificate of Corrections and Maintenance Fees, Reexamination and Reissue amendments, and recordation of assignment documents
    • Recognizes/evaluates patent-related correspondence and prepares responses for attorney signature.  Recognizes/reports office actions generated by the USPTO, drafts correspondence to foreign associates provides instructions or requests information, and/or prepares action-specific templates for filing with the Commissioner, USPTO.  Prepares all forms and filing parts prior to submitting to attorney for signature.  Researches each case and incorporates case-specific and substantive information (claims) in correspondence, forms and/or draft legal documents
    • Completes appropriate forms for newly issued patents to Firm’s patent maintenance vendor, establishing maintenance fee schedule, reminders and assignment to client’s maintenance fee account
    • Prepares/loads documents for electronic filing to include designating correct document types and formats, fee types and ensuring credit and payment of fees. Researches patent applications and/or patents in the USPTO’s Private Pair and for client specific extranet sites

    Qualifications

    • Requires high school diploma or equivalent and a minimum of two years U.S. (required) and foreign (preferred) patent prosecution experience and/or training
    • Proven experience managing patent applications from start to finish

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