Patent Docket Coordinator
July 27, 2016
Foley Hoag seeks a Patent Docket Coordinator with a solid understanding of the United States, International and various foreign Patent Office rules, procedures and guidelines. He/she must be able to apply this information correctly when reviewing PTO submissions to ensure we are meeting the requirements set in the respective communications. The integrity of the information maintained in the system is vital to ensuring the legal staff meet critical deadlines. Responsibilities include, but are not limited to: creating and maintaining patent prosecution files, maintaining database, entering deadlines and other case-specific data into docketing system, interpreting documents and identifying deadlines, preparing weekly and periodic reports, and following-up on deadlines. In addition, any general office administrative functions as necessary.
- Review submissions for US and international (PCT) applications. Confirm all documents indicated as part of the submission have been included. Review and compare documents posted to in-house electronic file with the documents posted to EFSweb, ePCT or other portals, modes of delivery (such as fax or mail). Ensure submission package meets the requirement set in the PTO communication. Communicate with attorney/secretary regarding any corrections or deficiencies with the submission. Confirm receipts received for all submissions reviewed on a given day.
- Review all correspondence that has been matched to the respective files for deadlines and other case-specific data. Enter the identified deadlines (with interim reminders) and information into the docketing system, in the manual backup system, on the respective file, and correspondence.
- Review entire prosecution file and identify upcoming deadlines and deficiencies requiring correction for all applications and issued cases received through New Business Intake. Enter applications and identify deadlines and other case-specific data into the docketing system.
- Review and enter new applications, respective deadlines and other case-specific data into the docketing system for all application s filed by Foley Hoag LLP.
- Review CPi Report and manual backup system, and research any discrepancies found. Generate daily report of all hard deadlines due that day, and all foreign deadlines due on the following day due to time difference; follow-up as needed.
- Update all client instructions in the database which have been received from the attorneys, patent agents and technical specialists. Confirm all instructions are in writing and if not request the attorney or technical specialist to follow-up with written confirmation to the client prior to deadline.
- Process all requests from attorneys for internal reminders and case-specific changes to be made to the client portfolio.
- Open and review all mail received for department, flag invoices and urgent matters for clerks to process (log, date stamp, copy invoices, and match to files).
- Rolling the date: Advance interim reminders and internal entries not completed on a given day so that it will reappear on the docket reports to be handled at a later date or until it is determined to be not necessary.
- Enter and maintain prosecution file wrappers in First-to-File, the firm’s electronic file wrapper system.
- Generate reports upon request.
- Thoroughly read incoming mail.
- Minimum 10 years of related work experience.
- Full understanding of the laws, articles, and guidelines in the US as well as in various foreign countries in order to interpret the correspondence received and to identify and anticipate potential problems that may occur. Knowledge of current changes that periodically occur in the countries and ability to apply them correctly to existing applications as well as filing made after the change has occurred.
- Working knowledge of CPI, IPDAS and Access.
- Knowledge of First-to-File a plus.
- Professional manner.
- Attention to detail.
- Ability to demonstrate discretion.
- Must work well independently as well as a contributing member of a hardworking team.
- Work effectively under high volume and time-sensitive conditions.
- Strong prioritization skills.
- Sound judgment.
- Strong work ethics.
- Ability to multi-task.
- Bachelor Degree, or equivalent experience.
How to Apply
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