Patent Prosecution Specialist
Company: Wilson Sonsini Goodrich & Rosati, Professional
Location: San Diego
Posted on: April 6, 2026
|
|
|
Job Description:
Wilson Sonsini is the premier legal advisor to technology, life
sciences, and other growth enterprises worldwide. We represent
companies at every stage of development, from entrepreneurial
start-ups to multibillion-dollar global corporations, as well as
the venture firms, private equity firms, and investment banks that
finance and advise them. The firm has approximately 1,100 attorneys
in 17 offices: 13 in the U.S., two in China, and two in Europe. Our
broad spectrum of practices and entrepreneurial spirit allow
exceptional opportunities for professional achievement and career
growth. The firm is looking for a Patent Prosecution Specialist to
join our growing Patents and Innovation team. The position is
responsible for assigned tasks and works under the direction and
guidance of attorneys, patent agents, IP specialists, and the
department leadership team. In this role, the Patent Prosecution
Specialist manages client portfolios on behalf of the assigned
clients, including filings, correspondence, and docket management.
It is the job of the Patent Prosecution Specialist to prepare,
revise, and file all documents related to US patent prosecution. It
includes new patent applications, missing parts, corrected
application papers, office action responses and other formal
documents, as well as to timely report all official correspondence
regarding the same. The Patent Prosecution Specialist must be
available to work overtime when required to meet the demands of the
position. In addition, the Patent Prosecution Specialist must
perform any other general office administrative functions as
necessary. This position is available as a hybrid or fully remote
work schedule. This position's work hours are 9:00AM - 5:00PM
Pacific Time. The Patent Prosecution Specialist must have knowledge
of or the ability to: Handle complex filings for attorneys and
staff and provides reliable suggestions and feedback Strong
familiarity with CFR, MPEP and other patent-related laws and
regulations, and engage in research when required Coordinate with
IP professional staff, patent practitioners and clients with
respect to assigned US patent prosecution matters Communicate with
clients, examiners, and other parties regarding status of
applications and/or other related matters Maintain close
communication with US and foreign paralegals to ensure deadlines
are met Analyze correspondence received from USPTO to ensure
accuracy of information for docketing purposes; provide timely
reminders of upcoming dates Prepare, e-file, and report filing of
various legal documents maintaining structural and formatting
requirements outlined the MPEP, including applications, (utility or
design, provisional, nonprovisional, divisional, continuation, and
national stage), responses to any PTO actions or examinations,
petitions, terminal disclaimers, etc. Prepare, e-file and report
handling of all associated formalities after filing new
applications to include, but not limited to prepare formal
documents such as Declarations, Powers of Attorney, Substitute
Statements, and Assignments as required by each jurisdiction.
Obtain required signatures and follow up with clients as needed
Report and handle all substantive USPTO actions with input from the
Responsible Attorney, prepare draft amendments/responses to
official actions, including Responses to Missing Parts, Report
Notices of Allowance, address any inventorship/assignment issues,
and prepare related paperwork (e.g., extensions, RCEs, corrected
ADSs, name changes, maintenance fee addresses, etc.) Review and
proofread documents from the USPTO (including Official Filing
Receipts, Notices of Publication, Notices of Recordation, and Issue
Notifications) and report those documents directly to the client.
If required, prepares a request for correction, when applicable
Prepare and forward reminders to clients regarding due dates and
instructions Prepare correspondence regarding foreign filing/U.S.
conversion deadlines Prepare correspondence regarding receipt of
Letters Patent and Certificates of Correction and mail or ship
document(s) to client Communicate with Harbor for preparation of
sequence listings Order certified copies of Priority Documents
Prepare simple formal drawings for applications Communicate with
vendor for preparation of formal drawings; review drawings for
accuracy and completeness prior to submission to the USPTO Provide
client support for portfolio management, including accommodating
client-specific reporting guidelines, and responding to client
phone calls and/or emails relating to specific requests or reports
Pull docket for assigned clients, maintain detailed annotations and
review deadlines daily; maintain complete ownership of docket
Monitor and follow-up on dates associated with the US and foreign
docket, including clearing dates and providing follow-up with
attorneys, clients, and management to provide adequate time to
respond Clear daily docket reports in collaboration with the IP
docket department and in accordance with established firm
guidelines Perform research and compile data as requested by
internal team members and clients Retrieve, review, and analyze
information from various sources in a timely manner Assist legal
staff with new business intake, including opening new patent
prosecution matters and sub-matters Prepare Powers of Attorney
(POA) for transferred cases Work with finance to obtain advance
retainers Upload U.S. patent invoices as needed to account payable
database Maintain electronic and physical files; update keep on top
memos Retrieve, review, and analyze information from USPTO’s Patent
Application Information Retrieval (PAIR) system Review and
understand rules in Code of Federal Regulations (CFR) and Manual of
Patent Examining Procedure (MPEP) Knowledge of Patent Center,
Electronic Filing System (EFS), and Electronic Patent Assignment
System (EPAS) Contact the Applications Assistance Unit, Electronic
Business Center or Assignment branches of the USPTO, as needed
Manage docket relating to US patent prosecution deadlines to ensure
timely completion of required actions, including timely reminders
and follow up w ith attorneys/staff to ensure docket actions and
deadlines are met . Responsible for meeting all assigned due dates
Maintain a secondary docket of due dates for each assigned per
established departmental guidelines. Independently calculate
deadline related to assigned matter and maintain independent
calendar of said deadlines Review and monitor incoming US filing
mail and ensure that critical items receive appropriate response
and that deadlines are entered in secondary docket Review and clear
docket reports provided by the IP Docketing Department in
accordance with established firm guidelines Sustain working
knowledge of changes in US patent prosecution rules, and facilitate
with management and suggest procedural modifications to accommodate
changes Enter daily fixed fees into database Perform other related
duties as assigned Education and/or Work Experience Requirements:
Bachelor's degree and/or paralegal certificate is preferred 5 years
of prior experience in a U.S. Patent Prosecution or Legal Assistant
role, with intermediate knowledge of all stages of patent
prosecution and USPTO requirements, including rules, deadlines, and
procedures Proficiency with U.S. and foreign patent office websites
and the ability to research and locate data Knowledge regarding a
calendaring system is required and knowledge of Computer Packages
Inc.'s (CPI) calendaring system is a plus Strong knowledge of
Microsoft products, database management systems, and electronic
files Strong desire to learn new tasks and technologies Knowledge
regarding aspects of patent prosecution and the United States
Patent and Trademark Office's Patent Application Information
Retrieval (PAIR) System, World Intellectual Property Organization
(WIPO), European Patent Office (EPO), Orbit, foreign PTO sites,
Electronic Filing System (EFS), and Patent Center databases Ability
to work well under pressure and demonstrated ability to coordinate
multiple competing tasks simultaneously and demands and adapt to
various practice management styles Excellent analytical skills,
with a strong ability to review and organize legal documents in
complex legal matters Ability to demonstrate accuracy, attention to
detail and strong organizational skills, and strong written and
verbal communication skills Ability to review and proofread
documents for grammar, spelling, proper language, and readability
Ability to prioritize workflow independently and has exceptional
time management skills and work ethic Demonstrate tact, diplomacy
and discretion while handling information and responding to
questions from staff, clients, attorneys, managers, and others
Ability to follow firm policies and procedures while working
remotely and in person Team player and willingness to provide
back-up support to team members as required Ability to work
overtime, as required The primary location for this job posting is
in San Diego, but other locations may be listed. The actual base
pay offered will depend upon a variety of factors, including but
not limited to the selected candidate’s qualifications, years of
relevant experience, level of education, professional
certifications and licenses, and work location. The anticipated pay
range for this position is as follows: San Diego, Boulder, Century
City, Los Angeles, and all other locations: $37.49 - $50.72 per
hour.&xa; The compensation for this position may include
overtime and a discretionary year-end merit bonus based on
performance. We offer a highly competitive salary and benefits
package. Benefits information can be found here . Equal Opportunity
Employer (EOE).
Keywords: Wilson Sonsini Goodrich & Rosati, Professional, Colton , Patent Prosecution Specialist, Legal , San Diego, California