Patent Foreign Filing Specialist
January 25, 2018
Foley Hoag seeks a Patent Foreign Filing Specialist with a solid understanding of the International and Foreign Patent Office rules, procedures and guidelines. The individual must be able to apply this information correctly to each client portfolio assigned to them in order to meet critical deadlines related to foreign formality filing requirements. Responsibilities include, but are not limited to, filing patent applications internationally (PCTs) and in various foreign countries (both regional and national), ensuring all formality filing requirements are completed in a timely manner, maintaining the virtual record file, meeting deadlines associated with formality requirements and payment of annuities. The Foreign Fling Coordinator must be available to work overtime when required to meet the demands of this position. In addition, perform any general office administrative functions as necessary.
- Foreign Filing Instructions: The foreign filing coordinator is responsible for sending 9- month and 27-month reminder letters to the client regarding their foreign filing options. The foreign filing coordinator is also responsible for preparing foreign filing cost estimates for the client.
- PCT Filings: The foreign filing coordinator reviews client PCT application filing instructions and compiles the information need to complete the PCT request. The foreign filing coordinator formats the specification, claims and abstract to meet PCT filing standards and ensures that all filing component documents are included and compliant with requirements. The foreign filing coordinator is also responsible for ensuring that all PCT formality filing requirements are completed in a timely manner. The foreign filing coordinator ensures that all PCT formality and informative notifications are forwarded to the client in a timely manner.
- Foreign National/Regional Phase Filings: The foreign filing coordinator monitors the receipt of instructions from the client for the entry of the application into designated countries and regions. This includes but is not limited to non-PCT filings, PCT direct filings and regional phase filings. The foreign filing coordinator sends filing instructions and related documents to the foreign associate in advance of the filing deadline. The foreign filing coordinator is also responsible for completing EP validation filings.
- Formality Documents: The foreign filing coordinator obtains certified copies of priority documents as needed, and coordinates the signature and forwarding of all formal documents in compliance with the foreign patent office filing requirements. This includes but is not limited to: Power of Attorney, foreign language translations, sequence listing, formal drawings and entitlement or assignments documents.
- Annuity Tracking and Payment: The foreign filing coordinator monitors and coordinates notice of annuity deadlines with the annuity vendor(s) or the client. The foreign filing coordinator reviews annuity vendor databased to confirm the annuity payment deadline is being tracked. The foreign filing coordinator notifies the foreign agent assigned to the case that a third party annuity vendor or the client is responsible for payment of the annuity. Where applicable, the foreign filing coordinator is responsible for forwarding annuity deadline reports to the client, securing their payment instructions and then transmitting those instructions to the vendor. For cases in which the client is responsible for annuity payments the foreign filing coordinator must forward any annuity deadline related notifications to the client in a timely manner.
- 3+ years of related work experience.
- Foreign Filing Coordinators must have a full understanding of the laws, articles, and guidelines in the various foreign countries in order to interpret the correspondence received, understand the requirements that are identified and ultimately meet the deadline in a timely manner. They must keep current with the changes that periodically occur in the countries and be able to apply them correctly to existing applications as well as filings made after the change has occurred. Their comprehension and understanding of the respective rules is vital to the accuracy of the information provided to the foreign associate and legal staff so that deadlines can be timely met.
- Professional manner.
- Attention to detail.
- Ability to demonstrate discretion when necessary.
- Must work well independently as well as a contributing member of hardworking team.
- Work effectively in time-sensitive situations.
- Strong prioritizations skills.
- Sound judgment.
- Strong work ethic.
- Ability to multi-task.
- Knowledge of US prosecution a plus.
- Bachelors Degree or equivalent experience
How to Apply
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