Patent Secretary
Job Summary
Job Description
As a Patent Secretary, you will be responsible for docketing and record keeping in the IP Management Database, preparing and managing patent documents for filing with the USPTO or WIPO, and coordinating tasks between IP Engineers, Patent Attorneys and Agents. Your tasks will include receiving and docketing documents, generating workflow tasks, distributing communications, maintaining the IP Management Database, generating reports, and managing the USPTO deposit account. Additionally, you will prepare and proofread patent forms, electronically file documents, assist with foreign counsel support, respond to patent correspondence, and update the IP Management Database.
Must have:
- Excellent verbal and written communication skills in English
- Strong attention to detail and ability to identify errors.
- Strong familiarity with the patent process.
- Experience with computer systems and databases.
- Proficiency with Microsoft Office and Adobe Acrobat.
- Proficiency with docketing software.
- Experience with Information Disclosure Statements.
- At least 7 years of support experience with patents.
- At least 10 years of docketing experience.
4 skills required
Job Details
Job Responsibilities:
- Docketing and record keeping in IP Management Database
- Preparation, proofreading, and management of patent forms and documents for filing with the United States Patent and Trademark Office (USPTO) or the International Bureau (IB) of the World Intellectual Property Organization (WIPO)
- Filing of patent forms and documents in compliance with the applicable country law either directly or in coordination with counsel/vendors[AL1]
- Coordination and scheduling of tasks between IP Engineers, Patent Attorneys and Patent Agents, and the USPTO or IB
Tasks:
Administrative Tasks:
- Receive and docket documents from the USPTO, foreign patent offices, inventors, IP Engineers, and Outside Counsel into IP Management Database
- Generating workflow tasks for IP engineers, Patent Agents, and Patent Attorneys in compliance with the applicable rules for the specific document
- Receive all external notifications and communications from Outside Counsel, USPTO, WIPO and foreign patent offices and distribute to the correct members of the IP Team
- Maintain Power Integrations’ IP Management Database (FoundationIP and DecipherIP) through updating records to reflect the current status of matters
- Interact with external patent resource vendors
- Generate reports on the status of Power Integrations’ US and Foreign patent portfolio
- Manage USPTO deposit account
Prosecution and Filing Tasks:
- Preparing and proofreading patent forms and documents, in particular, forms for the USPTO and the IB, including generating appropriate transmittals and office action response shells
- Electronic filing documents with the USPTO and the IB
- Assisting with patent forms and documents across different jurisdictions to support foreign outside counsel
- Independently responding to incoming patent correspondence, when applicable
- Working with IP engineers, Patent Agents, and Patent Attorneys to keep abreast of all rules, regulations, and procedures for filing applications, in particular with the USPTO and the IB
- Drafting transmittal letters and IDS forms for review by in-house Patent Agents and Patent Attorneys
- Updating IP Management Database (FoundationIP) in connection with Information Disclosure Statements (IDS), including adding references, marking the references status with the USPTO, managing the relationships between matters to ensure proper reference flow
- Manage proofreading of Publications and Issued Patents with external vendor
Requirements:
- Excellent verbal and written communication skills in English
- Strong attention to detail with superior ability to identify errors in printed documents
- Strong familiarity with the patent process
- Experience with computer systems and databases
- Proficiency with Microsoft Word, Excel, Visio, and Adobe Acrobat
- Proficiency with docketing software (familiarity with FoundationIP preferred)
- Experience with Information Disclosure Statements, 37 CFR 1.97, and MPEP 609
- At least 7 years of support experience with a specific emphasis on patents
- At least 10 years of docketing experience with emphasis on US patent prosecution
- Ability to work independently to complete tasks under time constraints
Power Integrations is committed to building teams that drive innovation and therefore review a range of factors when determining compensation. The annual base pay range for this position is $74,615 to $114,296. Our salary ranges are determined by role, level, qualifications and work location.
The range displayed on the job posting reflects the minimum and maximum target for new hire salaries for this position in California. Within the range, individual pay is determined by additional factors, including job-related skills, experience, and relevant education or training.
Power Integrations also offers to our eligible employees a comprehensive total rewards package that includes equity, medical benefits, ESPP, 401K, tuition reimbursement and time off programs. For additional benefits, please visit https://www.power.com/company/our-sustainability-priorities/people-our-engine-innovation.
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