New York NY
Legal

Patent Foreign Filing Specialist

CM Legal

Patent Foreign Filing Specialist 

The Foreign Filing Specialist will prepare and coordinate PCT and direct national reporting to the Client.  This role will manage and coordinate ongoing docket of foreign filing reporting, coordinating and communicating with patent foreign filing specialists and clients.  Works directly with the patent foreign filing specialists’ Firmwide to ensure work product is accurate and of the highest quality. Researches and analyzes issues as assigned by patent foreign filing specialists, timekeepers and Chief IP Officer related to foreign filing. 

ESSENTIAL DUTIES AND RESPONSIBILITIES

  • MONITORS THE FOREIGN FILING DOCKET

Reviews the foreign docket on a regular basis to ensure that deadlines are met and the main docket is reconciled on a daily basis.  Responsible for taking the initiative to prepare letters in response to status dates on the docket.  Responsible for making a decision on moving soft dates on the docket based on input from the timekeeper and foreign associate or personal knowledge of the responsiveness of the particular country in question.

  • COMPLETES COMPLEX AND SPECIALIZED SUPPORT FUNCTIONS RELATED TO FOREIGN FILING

Prepares documents necessary to meet formalities requirements and legalizing documents through the appropriate state authorities, consulates and/or embassies.
Prepares PCT applications, transmittals, Demands for Preliminary Examination and responding to Invitations to Correct Defects or other PCT and foreign associate communications.
Prepares and forwards instructions to foreign associates and foreign patent offices, including PCT, national phase and direct non-U.S. filings through to Grant.  Reports all necessary deadlines and documents to client including reminder letters.  Files all necessary communications in the firm’s document management system.
Prepares client status reports upon request.

  • RESPONSIBLE FOR BILLING ACTIVITIES ASSOCIATED WITH FOREIGN FILING

Reviews foreign associate bills for services rendered and codes the bills for accounting.  Contacts the foreign associate if the bill is inaccurate.  Works with the Accounting Dept. to review and reconcile statements from foreign associates.
Enters time and the billing description in the Firm’s billing system for projects completed.  Notifies the Accounting Dept. when a project is completed and ready for billing.
Prepares foreign filing estimates for clients using IP Global Estimator.

  • MONITORS THE PAYMENT OF FOREIGN ANNUITIES

Reviews the procedures and document preparation for payment of annuities.  Reviews the annuity fee docket on a regular basis to ensure that deadlines are met. Firm liaison with the vendor(s) providing annuity payment services.

OTHER DUTIES AND RESPONSIBILITIES

  • Works as needed after regularly scheduled hours to meet deadlines, client schedules and as communicated by the responsible timekeeper.
  • The Foreign Filing Specialist is expected to assist with additional duties as assigned.
  • Responsible for adhering to the firm’s policies and procedures as well as any unique policies, procedures and safety practices for the IP Prosecution Support Department.
  • Meet all time entry and timesheet deadlines as requested by the IP Department or Accounting.
  • Meet or exceed a billable hour requirement of 1536 hours per annum.
  • Working knowledge of foreign and USPTO policies and procedures
  • Must be knowledgeable of and current with PCT and national patent filing policies and procedures.
  • Possess knowledge of the US and foreign patent office structure, system, rules and procedures.
  • Possess knowledge of US and foreign patent online sites and related websites.
  • Requires good computer skills, including a moderate knowledge of Word and basic knowledge of Excel. 
  • Some experience with IP Global Estimator, IP LegalForms or PCT Easy preferred.
  • Requires excellent organizational skills; the ability to deal with several projects at once; and the ability to follow through as necessary.
  • Requires the ability to work independently and meet deadlines.
  • The ability to communicate effectively with others is essential.
  • Attitude should demonstrate a willingness to assist others.
  • Reliability and dependability are essential.
  • Flexibility regarding work schedule is required.

Education

  • B.A./B.S. degree is preferred. Related work experience may be used in lieu of formal education.

Experience:

  • Requires a minimum of 3 years of patent prosecution experience or 2+ years of foreign filing experience.

The expected salary range for this position is between $70,000 and $110,000. The actual base salary offered will depend upon a variety of factors, including without limitation, the qualifications of the individual applicant for the position, years of relevant experience, level of education attained, certifications or other professional licenses held, and if applicable, the location in which the applicant lives and/or from which they will be performing the job.
 

  • Max. file size: 300 MB.

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