Patent Prosecution / Docketing Specialist

Patent Prosecution/Docketing Specialist

Office-Based Position - Hyderabad- India

Position Overview

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 prosecution tasks as needed
• Adapt to changing priorities and handle multiple matters simultaneously

Required Qualifications

Education

• Bachelors degree; (LLB degree preferred)

Experience

• 7-12 years of solid patent prosecution experience required (e.g., commonly gained through paralegal and docketing experience)
• Experience with USPTO procedures, filing systems, and prosecution timelines
• Familiarity with U.S. patent law and prosecution practices
• Prior experience working with U.S. law firms strongly preferred

Technical Skills

• Proficiency with patent docketing systems and document management software
• Strong computer skills including MS Office suite
• Ability to learn new software and systems quickly
• Comfortable reading and understanding technical patent documents

Core Competencies

• Exceptional attention to detail with ability to spot errors and inconsistencies
• Strong organizational skills with ability to manage multiple deadlines simultaneously
• Excellent written and verbal English communication skills
• Ability to work independently with minimal supervision
• High level of commitment to confidentiality
• Strong proofreading skills for contextual, grammatical, and technical accuracy

Preferred Qualifications

• Experience with patent portfolio management and analytics
• Knowledge of foreign patent filing procedures
• Familiarity with patent family management across jurisdictions
• Understanding of IDS requirements and prior art analysis
• Experience with patent allowance and issue fee processes

Work Environment and Expectations

• Office-based position in India
• Working hours will require significant overlap with U.S. time zones (Central Time)
• May occasionally require flexibility to accommodate urgent deadlines
• Collaborative environment with regular video conferences with U.S.-based team

What We Offer

• Competitive compensation commensurate with experience
• Opportunity to work with a respected U.S. IP law firm
• Exposure to diverse patent prosecution matters across multiple technology areas
• Professional development and training in U.S. patent practice
• Long-term career growth potential within expanding India operations

Compliance and Professional Standards

This position requires adherence to:

• Texas Bar Association Rules of Professional Conduct
• USPTO Rules of Professional Conduct
• Firm confidentiality and professional liability policies
• Data security protocols for handling sensitive client information