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Foreign Filing Specialist

Company: Confidential Location: Massachusetts
Industry: Legal City/Region: Boston
Commitment: Full Time Contract Type: Direct Hire
Practice Area: Administrative Education: Undergraduate Degree

Our client is looking to hire a  Foreign Filing Specialist on a direct hire basis.  The Foreign Filing Specialist is responsible for supervising, administrating, and implementing the foreign filing support function.  This includes foreign filing records, file management, and oversight of the foreign docket.  The Foreign Filing Specialist is responsible for the coordination of all aspects of filing patent applications worldwide.  Monitor critical due dates to insure all deadlines are met in order to preserve patent rights.  Manage and supervise workflow.  Prepare documents and attend to all formalities.  Support special projects as needed.

Duties & Responsibilities:

  • Work as a team member with other Foreign Filing staff in handling of all foreign filing related issues.
  • Assist attorneys and Foreign Filing Specialists in all phases of international patent prosecution
  • Ability to assist the Foreign Filing Specialist in filing PCT Patent applications, National Phase applications, Direct Filings (i.e., non-PCT countries), Invitation to Correct Defects (i.e., drawings sequence listings), Formal Drawings (sending correspondence to draftsman to complete defects in PCT application), Country Law research, PCT updates (new rule changes), Formalities (POA’s, Declarations, Certified Copies, Translations, Updated Inventor Information, and Assignments), reporting letters,
  • Conduct web-based research when needed/required.
  • Draft correspondence to foreign agents/counsel regarding filing and maintenance of patents
  • Work on special projects for IP Department Manager and Attorneys/Agents and provide them with ongoing status reports.

ESSENTIAL KNOWLEDGE, SKILLS, AND ABILITIES:

  • Knowledge of the nature of the legal system and areas of legal practice
  • Skill in researching legal issues, whether printed or electronic
  • Ability to accurately and thoroughly document and file information
  • Ability to work with others to accomplish goals
  • Ability to communicate effectively with attorneys, management and support staff, acting as a liaison with various internal departments as well as with outside agencies
  • Ability to work under pressure with deadlines and conflicting demands
  • Excellent organizational skills

EDUCATION AND EXPERIENCE:

  • Bachelor’s degree plus 3 years of Foreign Filing Experience.
  • Must have excellent organizational, verbal, and written communication skills
  • Must demonstrate excellent interpersonal and computer skills as well as a strong work ethic
  • Working knowledge of iManage, CPi. Word/Excel, Outlook and CMS a plus.

 

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