Patent Transfer Specialist

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 1,200 attorneys in 19 offices: 14 in the U.S., three in China, and two in Europe. Our broad spectrum of practices and entrepreneurial spirit allow our staff exceptional opportunities for professional achievement and career growth.

Wilson Sonsini Goodrich & Rosati’s Patents and Innovation group has an immediate opening for a Patent Transfer Specialist. The Patent Transfer Specialist is responsible for reviewing and processing patent files being transferred out of the firm in accordance with established transfer procedures. This position is also responsible for the termination and closure of patent files.

Responsibilities:

• Process incoming and outgoing client transfers.
• Review and organize paper and electronic files and identify and reconcile outstanding items.
• Review of application case statuses in USPTO Patent Center , WIPO, EPO, Orbit, foreign PTO sites, and review of electronic documents and physical files to build family case lists.
• Communicate with internal departments as well as clients, new counsel, and foreign counsel in order to facilitate the intake of IP portfolios.
• Communicate with working teams, clients, and new clients regarding outgoing matters.
• Audit files to be transferred out of the firm, including portfolio review, pending deadlines and communication with new counsel. Compare and reconcile system reports. Confirm transfer of documents with the working team.
• Send physical files to the Copy Center for scanning, save scans per department procedure, if applicable. Purge physical and electronic files being transferred out of the firm and coordinate transfer with the Records team.
• Follow-up with new counsel or client for acknowledgement of receipt of transfer and forward transfer correspondence for transfer-out files.
• Prepare and file withdrawal of power of attorney documents or change of correspondence documents, for transfer-out files, if needed.
• Terminate relationships with clients who pay maintenance fees only and handle closures/termination for inactive clients.
• Work on other projects as necessary.   

Qualifications:

• Bachelor’s degree and/or paralegal certificate is preferred.
• Minimum of 5+ years of prior experience in a U.S. and foreign patent prosecution, with high-level knowledge of rules, deadlines, and procedures.

Knowledge, Skills, and Abilities:

• Must be knowledgeable regarding aspects of patent prosecution and the United States Patent and Trademark Office’s Patent Center and Electronic Filing System (EFS).
• Knowledge of Computer Packages Inc.’s (CPI) or similar calendaring system is required.
• Proficiency with U.S. and foreign patent websites and the ability to research and locate data.
• Demonstrate accuracy, attention to detail and strong organizational skills, and strong written and verbal communication skills.
• Excellent analytical skills, with a strong ability to review and organize legal documents in complex legal matters.
• Ability to review and proofread documents for grammar, spelling, proper language, and readability.
• Ability to prioritize workflow independently and efficiently.
• 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.
• Self-starter who is detail-oriented, efficient, flexible, and results-oriented.
• Advanced computer skills including proficiency in Microsoft Office, Outlook, and Excel.
• Able to keep abreast of practice area processes as appropriate to the position.
• 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 Palo Alto, 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 Francisco and Silicon Valley: $39.23 – $53.08 per hour

Austin, Boston, Boulder, District of Columbia, Los Angeles, New York, San Diego, Seattle, and Wilmington: $35.14 – $47.55 per hour

Salt Lake City and all other locations: $31.47 – $42.57 per hour

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).