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Job Details

IP Foreign Filing Specialist Patent Prosecution

Location
Washington, DC, United States

Posted on
Aug 27, 2023

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Profile

Compensation
Base to $70,000 plus Benefits and Bonus • Medical and Dental Coverage • Paid Time Off
• 401K • Life and AD&D Insurance • Savings Accounts • Tuition reimbursement
• Corporate Gym Memberships and More
Location
Washington, DC 20035
The Organization
U.S. National Law Firm
Key Responsibilities
Collaborate with associates in foreign jurisdictions on filings in PCT and non-PCT countries to ensure accurate and timely application preparation and filing
Monitor and analyze correspondence and response deadlines for foreign patent prosecution; prepare response letters, manage soft dates and perform daily docket reconciliation
Prepare documents to meet formalities requirements; legalize through the appropriate state authorities, consulates and/or embassies
Gather and prepare PCT applications, transmittals, Demands for Preliminary Examination and responses to Invitations to Correct Defects
Communicate instructions to foreign associates and foreign patent offices, including national phase and direct non-U.S. filings
Review, code and follow-up on foreign associate bills in collaboration with the accounting team to reconcile statements
Enter time and billing matters into billing software
Monitor the annuity fee docket and act as liaison with vendors providing annuity payment services
Perform new matter intakes, database audits and quality review of docket updates resolving docketing inaccuracies
Required Skills
5 years of extensive patent foreign filing experience
Demonstrated ability to maintain a large foreign docket
Must have proficiency with Microsoft Word, Excel, Outlook and PowerPoint, CPI, Global IP Estimator, Webview (or Elite), IP LegalForms and/or PCT Safe
Thorough understanding of foreign patent prosecution procedures, terminology, and deadlines

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