Patent Practice Specialist

July 11, 2018

Offices

Foley Hoag seeks a Patent Practice Specialist with an advanced understanding of U.S. and foreign patent prosecution rules, procedures and guidelines. The person who fills this role must be able to apply their knowledge to different contexts and be able to identify and review critical information. Responsibilities include, but are not limited to, providing project-based support to the patent practice group, preparing custom client reports from our patent systems to meet the enhanced needs of internal and external clients, supporting review of patent files during client file intakes to ensure our patent systems are complete and accurate, and reviewing annuity-related correspondence. The Patent Practice Specialist must be available to work overtime when required to meet the demands of this position, and also perform any general office administrative functions as necessary.



Responsibilities

  • Project Support for Patent Prosecution Group. The Patent Practice Specialist identifies and compiles client-specific custom reports from our patent systems as needed; is responsible for the assessment, review and completion of project-based work under the direction of the patent attorneys, agents or technology specialists; and follows detailed instructions, manages expectations and meets project delivery deadlines.
  • Custom Client Reports. The Patent Practice Specialist will be responsible for preparing custom client reports to enable the client to review and manage their patent cases (some client-specific reports will be prepared and transmitted on regular time intervals, others upon client request), and may also be involved in compiling information related to the current status of response deadlines in preparation for periodic client docket review calls.
  • Client/File Transfers. The Patent Practice Specialist assists with the review of client file intakes to ensure our patent systems are updated with complete and accurate information; oversees the review of the transfer docket report against our patent systems to ensure that all deadline are accounted for and tracked, and may generate documents and correspondence to formalize the transfer with the USPTO and foreign counsel; assists with the validation of matter specific details and deadlines against public databases; and assist with the preparation of files for transfer out.
  • Annuity Tracking. The Patent Practice Specialist will review and monitor annuity payment deadline notices and related reminders; review annuity data across our systems and follow-up and follow through with the annuity vendor(s), the foreign agent and/or the client; confirm annuity payment options, status and tracking of related deadlines; and respond to data queries from the annuity vendor and resolve any related issues or data discrepancies.

Requirements

  • 5+ years of related work experience.
  • Patent Practice Specialist must have a practical understanding of the laws, articles, and guidelines related to U.S. and foreign patent prosecution. They must be able to review complex patent portfolios and identify and compile critical information. Previous experience with annuities is preferred.
  • Professional manner, strong customer service skills and exemplary attention to detail.
  • Must be a strong critical thinker with a demonstrated ability to work independently and to proactively and effectively solve problems.
  • Must work well independently and as a contributing member of a hardworking team.
  • Strong project management and prioritization skills.
  • Strong work ethic and the ability to multi-task.
  • Bachelors Degree.

How to Apply

Please click here to apply now.