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Under general supervision, the IP US & Citation Filing Specialist provides assistance to the Intellectual Property practice group and respective client team, with respect to domestic patent filings and the Citation and Information Disclosure Statement (IDS) process.
Job Functions:
- Responsible for the preparation and filing of all US applications (including 371 applications) and responses, which includes gathering all necessary information, monitoring and maintaining applications pre-and post-exam; complying with client instructions, firm procedures, and USPTO foreign requirements (as they relate to 371 applications).
- Proactively manage US prosecution docket actions, ensuring all deadlines are met.
- Prepare and file formalities (e.g., declarations, assignments, powers of attorney, small entity statements), send to clients for signature, track statuses through submission, provide necessary follow-up, and file with the USPTO.
- Prepare draft shell documents for all US responses.
- Responsible for the preparation, maintenance and submission of all Information Disclosure Statements which includes gathering all necessary references and citation translations, preparing "fit-to-file" PDFs, Section 18 responses, and coordinating responses with US Filing Specialist, monitoring deadlines to ensure all deadlines are met; complying with client instructions, firm procedures, USPTO and foreign requirements (e.g. IL, CA, NZ).
- Responsible for the coordination of specification reviews (working with practitioners) for IDS submissions.
- Preparation of draft reporting for Practitioner review.
- Preparation of Notice of Allowance Checklist for QC review.
- Assisting practitioner with identifying links between inventions cross-cited across patent families to help determine citation strategy for linking dockets (i.e. subject matter linking, sister dockets, etc.).
- Back-fill citations for transfer-in cases.
Essential Competencies:
- Works proactively with others to support efforts within the department to improve efficiency and add value.
- Organizes and prioritizes assignments and contributes to the department's ability to meet or exceed goals and standards.
- Maintains strong understanding of Patent and Trademark rules of practice (37 CFR).
- Uses innovative thinking and exercises sound judgment.
Qualifications:
- Minimum of 4 years' working knowledge of U.S. patent prosecution procedures and regulations, with 1-2 years' experience with the Citation and IDS process.
- Familiar with USPTO procedures, rules and requirements.
- Ability to utilize IP Software with the demonstrated ability to learn new technology, processes and procedures effectively and with confidence.
- Superb attention to detail and ability to produce work quickly, by prioritizing assignments to meet deadlines.
- Must be able to work in fast paced environment, independently, as well as in team setting.
- Exceptional communication (both written and verbal) skills.
- Demonstrated commitment to providing superior client service.
- Proficiency in all Microsoft Office products is essential.
- Bachelor Degree, or equivalent experience.
Work Authorization:
- Applicants must be legally authorized to work in the United States without the need for sponsorship by the Firm (either now or in the future).
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Choate, Hall & Stewart LLP
Sep 05, 2025