Job Description

Seeking a IP International Patent Specialist (Quality Control) to join the IP Practice Services team.

Position Summary: The IP International Patent Specialist (Quality Control) is responsible for the quality control (QC) function for international patent filings.  The IPS (Quality Control) will provide full support to the patent attorneys, agents and clients in filing and maintaining international and foreign national applications and patents. Specific duties and responsibilities include, but are not limited to, the following:

Position Responsibilities:

QC responsibilities:

• Coordinate with IP professionals and patent practitioners to review PCT filings, PCT response, Direct Filing instructions and International Design filings to ensure accuracy and completeness
• Complete quality control checklists to ensure compliance with the firm’s risk management directives and best practices, as well as USPTO and international rules and regulations
• Triage incoming international filings to be reviewed, prioritizing as necessary and communicating expected turnaround time to the IP professionals and practitioners

International Patent Specialist (IPS) responsibilities:

• 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

Skills & Experience

Required:

• Available to work overtime, as required
• exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
• 3+ years experience in an IP-related role

Preferred:

• 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)

Competencies

• Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs
• Ability to work independently and under pressure/tight time constraints
• Creative and entrepreneurial approach to problem-solving and process improvement
• Flexible and agile, ability to reprioritize with changes in the business
• Strong initiative and a get-it-done attitude
• Excellent communication and interpersonal skills