Intellectual Property Specialist

1 month ago

Palo Alto, United States The Phoenix Group Full time

Our client, a multinational law firm, is seeking a Intellectual Property Specialist to join their team Office location flexible (San Francisco, Palo Alto, LA, San Diego, Denver, New York, or Washington D.C.)


Primary Responsibilities:


Foreign Filing and Coordination with Foreign Associates

  • Prepare PCT and direct national application filings, including drafting reporting letters for clients and foreign agents. Conduct analysis and research on matters requiring further attention and promptly notify responsible attorneys and staff of any discrepancies or concerns.
  • Manage ongoing coordination with international agencies, receiving offices, and foreign associates for filing various applications. Efficiently communicate detailed information to team members, agencies, and foreign associates.
  • Address underlying application and procedural issues; proactively manage unique situations by initiating research or delegating tasks when necessary. Ensure timely follow-up to confirm resolution.
  • Serve as a resource to attorneys and staff on PCT regulations and compliance matters.

Foreign Docketing

  • Maintain and monitor docket for all foreign actions, ensuring compliance with foreign rules, including but not limited to the PCT, EPC, 37 C.F.R. Rules, and MPEP rules.
  • Oversee and manage daily Red Book due dates for a large docket, ensuring timely action and coordination with attorneys and staff to meet deadlines.
  • Review and monitor incoming foreign filing correspondence, ensuring that critical items receive the appropriate response and that all deadlines are accurately entered into the Red Book.

Annuities

  • Ensure clients are properly outsourced and that firm processes are followed for annuity inquiries when nonpayment notices are received.
  • Maintain open communication with attorneys and agents to ensure smooth handling of outsourcing and firm processes.

Reporting and Analysis

  • Prepare estimates and status reports for clients, developing strong relationships with clients and foreign associates to better understand and address their business and administrative needs.
  • Apply analytical and research skills to produce accurate and well-detailed correspondence and drafts.

Workflow Management and Quality Control

  • Meticulously review all work products to ensure the highest level of accuracy, regularly applying management techniques and procedures while working under tight deadlines.
  • Actively prioritize tasks in response to deadlines and evolving critical needs.
  • Independently calculate deadlines related to assigned matters and maintain a personal calendar of deadlines.
  • Enter daily fixed fees into the database.


Education and Experience:

  • Minimum three to five years of PCT and national patent filing prosecution support preferred.


The Phoenix Group Advisors is an equal opportunity employer. We are committed to creating a diverse and inclusive workplace and prohibit discrimination and harassment of any kind based on race, color, religion, gender, sexual orientation, gender identity or expression, national origin, age, genetic information, disability, or veteran status. We strive to attract talented individuals from all backgrounds and provide equal employment opportunities to all employees and applicants for employment.

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