We are seeking a detail-oriented Patent Prosecution/Docketing Specialist to join our India-based team and to be part of our legal support team that includes paralegals and docketing specialists. This role focuses on the post-filing stages of U.S. patent prosecution, including managing office action responses, IDS filings, portfolio audits, and USPTO compliance. You will work closely with U.S.-based attorneys and paralegals to ensure seamless patent prosecution from filing through allowance and issuance.
Reports To
U.S.-based Partners and Director of Administration
Essential Responsibilities
Document Preparation and Quality Control
Prepare, proofread, and edit draft patent documents for accuracy and compliance
Reformat patent documents for attorney review
Ensure all documents comply with USPTO formatting requirements
Audit previously filed documents to identify errors and maintain quality standards
Patent Prosecution Support
Prepare office action response templates, including and downloading prior art cited in office actions
Prepare Information Disclosure Statements (IDS) and other prosecution documents
Identify references from search reports in foreign jurisdictions
Handle requests for formal drawings and certified copies from USPTO
Handle certificates of correction
Portfolio Management and Docketing
Audit and manage patent portfolios to ensure compliance throughout prosecution
Monitor client dockets and track upcoming deadlines
Collaborate with U.S.-based docketing team to maintain current and accurate records
Flag critical deadlines and ensure timely responses
Maintain organized electronic filing systems for all client matters
Administrative Support
Maintain confidentiality of all client matters and proprietary information
Organize and maintain electronic document management systems
Support attorneys with various patent pro