IP International Patent Specialist (Annuities) Cooley is seeking an IP International Patent Specialist (Annuities) to join the IP Practice Services team.
Position summary :
The IP International Patent Specialist (Annuities) leads annuity outsourcing efforts, coordinates client, foreign agent, and vendor annuity related tasks, and provides full support to patent attorneys and agents in filing and maintaining international and foreign national applications and patents.
Specific duties and responsibilities include, but are not limited to, the following:
Annuities Specialist responsibilities:
Actively encourage clients to outsource annuity and maintenance fee management in accordance with firm risk management requirements.
Support the outsourcing process by collaborating with the designated annuity vendors on client account set-up and data migration
Ensure all annuity and maintenance fees are timely paid until annuity responsibility has transitioned to the client
Interact with foreign agents to ensure they are aware of the client's annuity payment preferences
Review and confirm that all annuity related correspondence is processed according to the firm's risk management procedures
Collaborate with clients to identify, establish, and maintain data integrity, to implement consistent internal processes and applicable database management in support of client and firm objectives
Review, research and resolve data discrepancy reports from the annuity vendors, foreign agents and clients as requested
Regularly audit annuity deadlines and information in Cooley systems for accuracy and completeness
Prepare client specific annuity reports
Confirm and transmit annuity payment instructions
Reconcile payment confirmation reports and provide preliminary approval of invoices
Coordinate with the IP Client Transition Team to ensure annuity payment preferences are confirmed
Timely respond to client requests for budget information
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
After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
3+ years experience in an IPS or equivalent role including direct responsibility for the tracking and payment of annuities, interacting with annuity vendors, and outsourcing responsibility for annuity payments.
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
Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.
EOE.
The expected hourly pay range for this position is $46.50 - $68.00.
Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate.
We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and/or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and/or adults and other parental support benefits.
In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off ("PTO") and 10 paid holidays each year.
We provide generous parental leave and fertility benefits.
New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.
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