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Foreign Filing and Compliance Specialist

2 months ago

Palo Alto, California, United States The Phoenix Group Full time
Job Summary

We are seeking a highly skilled Intellectual Property Specialist to join our team at The Phoenix Group. As a key member of our team, you will be responsible for managing the filing and coordination of international patent and trademark applications.

Key Responsibilities
  • Foreign Filing and Coordination
    • Prepare and submit PCT and national application filings, including drafting detailed reports for clients and foreign agents.
    • Conduct thorough 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.
  • 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.
    Requirements
    • Minimum three to five years of PCT and national patent filing prosecution support preferred.