IP INTERNATIONAL PATENT SPECIALIST (ANNUITIES)

We are seeking an IP International Patent Specialist with International Annuity expertise to join our IP Practice Services team. The IP International Patent Specialist (Annuities) leads annuity outsourcing efforts, coordinates client, foreign agent, and vendor annuity related tasks, and provides full support to patent attorneys and agents in filing and maintaining international and foreign national applications and patents. THIS IS A REMOTE/HYbrid OPPORTUNITY with requirements of coming in on special events only BUT MUST LIVE near FIRM LOCATION!! YOU will also get a 7.5% profit share, 20 Days of PTO, 3K in tuition reimbursement, 1K in Home Health equipment, Bonus etc.. Specific duties and responsibilities include, but are not limited to, the following:

SKILLS & EXPERIENCE

:

• Available to work overtime, as required
• After orientation exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
• 3+ years experience in an IPS or equivalent role including direct responsibility for the tracking and payment of annuities, interacting with annuity vendors, and outsourcing responsibility for annuity payments.
• Bachelor’s Degree
• Previous law firm experience
• Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
• Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)

• Coordinate with IP professional staff and practitioners as well as clients and foreign associates, with respect to all international patent prosecution matters
• Monitor due dates and provide timely reminders to responsible attorneys/agents and clients. Responsible for meeting all assigned foreign due dates
• Prepare and file PCT applications, foreign direct applications, foreign national phase applications, foreign design applications, and foreign divisional applications
• Examine all incoming PCT actions and ensure timely reporting, prepare responses to invitations, requests under 92bis, publications, article 19/34 amendments, chapter II demands, search reports, written opinions, POA’s, IPRP’s and other formal communications
• Handle all foreign actions and reporting including formalities (e.g., POA’s, assignments, declarations, certified copies of formal documents, etc.), status checks, requests for examination, publications, voluntary amendments, responses to official actions, notices of allowance, issue fee payments, grant, and patent term extensions
• Analyze correspondence received from USPTO, WIPO, foreign national patent offices, and foreign associates to ensure accuracy of information for docketing purposes
• Sustain working knowledge of changes in international patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
• Generate foreign prosecution cost estimates and patent prosecution budgets as requested
• Conduct worldwide searches to create portfolio status charts as requested
• Complete administrative tasks including request docket numbers, create new files, maintain client data rooms, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
• Review daily and weekly docket reports provided by the central IP Docketing Department. Provide detailed docket annotations related to upcoming dates on a daily basis
• Maintain double docket
• Assist practitioners on all aspects of foreign filing and prosecution, as requested