International Filing Specialist

Summary

The Senior International Filing Specialist will assist attorneys in rendering legal services to clients and be responsible for assisting in all procedural and substantive matters regarding foreign patent applications.

The work schedule for this position (non-exempt) will be 37.5 hours per week, Monday – Friday, from 9 am – 5:30 pm. This role offers a hybrid work arrangement, allowing you to work both from home and at your designated office. The frequency of in-office work will be determined by business needs and guided by your department’s directives. This position can be based in any of our U.S. offices.

Responsibilities

• Deep understanding of international filing procedure.
• Prepare new patent applications for filing at appropriate patent office overseas, the Patent Cooperation Treaty (“PCT”) U.S. Receiving Office and in the International Bureau of WIPO, ensuring information for application and formalities is accurate and complete.
• Prepare and file US 371 applications.
• Obtain and file outstanding documentation such as priority documents, powers of attorney, assignments, formal drawings, etc., needed to complete patent application. Legalize documents if necessary.
• Understanding of docketed deadlines, their meanings and significance.
• Communicate with attorneys, foreign associates, clients, embassies, the State Department, the United States Patent and Trademark Office, the International Bureau of WIPO, including drafting reporting letters to clients and instruction letters to foreign associates, preparing and processing paperwork necessary during pendency of patent application and during life of patent.
• Ordering certified copies of patent applications from USPTO.
• Review transferred files from new clients or from former legal representatives and set-up new files.
• Prepare closed files for inactivation, or for transferring to client or new counsel.
• Obtain various cost estimates for attorneys and clients.
• Perform other related duties as assigned.

Requirements

• Proficiency in navigating some or all of the following PTO platforms: Patent Center, WIPO, and PTO Financial Manager.
• Comprehensive knowledge of International Patent rules.
• Must have strong knowledge of IP docketing systems.
• Multitask in a highly demanding, deadline-driven environment.
• Possess a high level of attention to detail.
• Take initiative and work both independently and in a team environment.
• Exemplary client service skills, with the ability to interact with various departments, all levels of firm executive personnel, vendors and contractors.
• Excellent written, verbal and organizational skills.
• Maintain and handle confidential and sensitive information with discretion.
• Promote effective work practices, work as a team member, and show respect for all firm personnel.
• Proficiency in MS Office applications.

Reporting to the Senior Patent Operations Manager, the ideal candidate will have 6+ years of experience handling international patent prosecution. Requires demonstrated excellence in all aspects of international patent work, including substantially all applicable tasks and projects.

Compensation
The anticipated range for this position is: $104,000.00-$155,750.00, plus bonus.

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