Patent Prosecution Specialist
- Salary
- $35.1–$47.6/hr
- Hiring from
- United States
- Work type
- Remote
- Posted
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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 with 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 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).
For more information about careers at Wilson Sonsini, visit:
Wilson Sonsini is the premier legal advisor to technology, life sciences, and growth enterprises worldwide, as well as the venture firms, private equity firms, and investment banks that finance them. We represent more than 300 public enterprises and 3,000 private companies in a wide range of today’s cutting-edge industries, from AI and fintech to life sciences and mobility.
For more than 60 years, our attorneys and professional staff have created a unique working environment. With deep roots in the fast-paced and innovative world of Silicon Valley, the firm fosters an entrepreneurial spirit and team-oriented approach for all employees, providing professional and personal development opportunities and encouraging all departments to promote a stable and optimal work/life balance.
Wilson Sonsini is committed to creating a diverse and inclusive workforce globally. We have built a culture in which employees of all backgrounds, viewpoints, and experiences are encouraged and empowered to achieve their maximum potential. Our firm is consistently recognized among the top law firms in annual diversity rankings. For example, Wilson Sonsini ranked No. 2 among firms with more than 601 attorneys in Law360’s 2025 Diversity Snapshot. Additionally, in 2025, for the seventh consecutive year, Wilson Sonsini achieved Mansfield Plus Certification, and in 2026, for the sixth consecutive year, the firm achieved a top score of 100 on the Human Rights Campaign Foundation’s Corporate Equality Index.
We are also dedicated to enhancing the communities in which we live and work by providing legal services, financial support, and volunteer services to worthy agencies and individuals in need. In 2025, Wilson Sonsini attorneys and staff provided more than 80,500 pro bono hours, participated in 125 community service projects, and raised over $130,000 for charitable organizations and causes. In addition, the Wilson Sonsini Foundation contributed more than $2.35 million to 112 law-related organizations and 129 community organizations in 2025.
Wilson Sonsini has 17 offices in 16 technology and business hubs worldwide.
Austin, TX
Boston, MA
Boulder, CO
Brussels, Belgium
Century City, CA
Hong Kong
London
Los Angeles, CA
New York, NY
Palo Alto, CA
Salt Lake City, UT
San Diego, CA
San Francisco, CA
Seattle, WA
Shanghai (China)
Washington, D.C.
Wilmington, DE
