Patent Annuities Specialist Level II

3 days ago

Boston, United States Binding Minds Inc. (Certified Disability Owned Business Enterprise) Full time

Annuities Specialist Level II

Location: Boston, MA

SUMMARY:

The Annuities Specialist is responsible for the Firm’s patent annuity process. This requires accurate and efficient coordination of the Firm’s annuity and maintenance fee payment program to maintain the functionality and stability of the annuity records reported monthly to the Firm’s annuity clients. In addition, the Annuities Specialist assists with researching and gathering feedback to promote improved processes and provides a high level of quality assurance through annuity system checks. Further, this position coordinates the intake of annuity-related matters to ensure the Firm’s docket, annuity, and risk protocols are met.

ESSENTIAL FUNCTIONS:

  • Maintains annuity contact information and processes annuity system updates with high accuracy.
  • Independently establishes annuity management settings for client in CPi and AMS as needed, facilitates client annuity instructions, requests annuity/maintenance fee funds, and coordinates to address complex annuity inquiries/requests for practice deviations.
  • Independently processes monthly incoming packages from vendor to reconcile discrepancies between vendor and firm’s annuity database with high accuracy.
  • Independently processes with high accuracy monthly outgoing packages to vendor, including processing payment client instructions submitted through AMS, verifying client fund information for pending instructions, organizing payment and special instructions for package month, and forwarding instructions with funds to vendor.
  • Reviews, prioritizes, and processes with high accuracy assigned daily physical, electronic and facsimile communications.
  • Independently prepares, electronically/manually mails, and tracks annuity/maintenance fee notices, reminder notices, and certified letters to clients with high accuracy.
  • Reviews and reports foreign annuity related correspondence from foreign patent offices concerning accumulated annuities and renewals to clients; and coordinates payment through associates for the firm's annuity clients unless otherwise instructed, and coordinates payments for non-annuity clients if explicitly instructed.
  • Regularly performs a comprehensive annuity review for incoming patent matters received through the file intake process and administers system updates with high accuracy based on country requirements.
  • Regularly coordinates with intake paralegals and responsible parties on annuity-related intake projects to obtain vital annuity information to meet firm docket, annuity, and risk protocols and resolves concerns.
  • Assists annuities manager with updates to annuity policy and procedural manuals to incorporate amendments to rules governing the annuity/maintenance fee process.
  • Regularly notifies the annuities manager of system issues, procedural changes, and case-specific complications to ensure awareness.
  • Supplies annuity data and procedural information when requested by attorneys, support staff and clients.
  • Regularly seeks clarification of intention where instructions or requests do not conform to the firm’s established annuity/risk policies and procedures and coordinates a resolution with the annuities manager.
  • Regularly provides a high level of quality assurance through annuity system checks.
  • Regularly adheres to established work schedule, and routinely exercises flexibility to meet workload demands.
  • Keeps abreast of current rules and requirements through CPi Online announcements and foreign associate communications/bulletins as well as through research and information obtained through the Kluwer, MPEP, USPTO, WIPO, and other websites.
  • Regularly assists annuities manager with researching/gathering feedback to promote improved processes or new procedures.
  • Regularly performs additional duties and completes projects as assigned with little oversight.

QUALIFICATIONS:

  • Minimum of 3 to 5 years of direct work experience in the field of intellectual property/patent annuities.
  • Solid knowledge of domestic and international intellectual property rules and annuity requirements.
  • Highly proficient in MS Suite, Elite and DeskSite with solid computer and database management skills.
  • Experience with IP software applications such as CPi, AMS and IPDAS strongly preferred.
  • Exceptional oral and written communication skills and the ability to effectively communicate workflow and project updates.
  • Strong time management, prioritization, problem-solving, and organizational skills, and the ability to work effectively in a high-pressure environment.
  • Strong people skills and ability to work effectively with different levels of constituencies.
  • Flexibility and capacity to respond calmly, efficiently, and effectively in stressful situations.
  • Punctual and dependable and able to meet set deadlines and work effectively under pressure.
  • Ability to maintain confidentiality of matters and other firm business information.

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