Patent Foreign Filing Specialist

September 29, 2020

Offices

A Foreign Filing Specialist must have a solid understanding of the International and Foreign Patent Office rules, procedures, and guidelines. The foreign filing specialist must be able to dynamically apply their knowledge and skills in proactively managing their assigned clients and associated docketed deadlines. The foreign filing specialist must demonstrate ownership and accountability for filing formality documents in their assigned cases. Responsibilities include but are not limited to filing patent applications internationally (PCTs) and in various foreign countries (both regional and national), ensuring all formality filing requirements are completed in a timely manner, maintaining the virtual record file and providing support to the attorneys/agents on the foreign filing process. The foreign filing specialist must be available to work overtime when required to meet the demands of this position. In addition, they must perform any general office administrative functions as necessary.

Responsibilities

  • Proactive Docket Management: The foreign filing specialist proactively reviews deadlines on their assigned docket, prepares documents in advance and proactively clears deadlines off the docket. The foreign filing specialist liaisons with the attorneys/agents to ensure all final deadlines are accounted for and cleared off the docket prior to the final loss of rights deadline.
  • PCT Filings: The foreign filing specialist reviews the priority application record in advance of the PCT filing deadline. The foreign filing specialist prepares and files the PCT application in accordance with filing requirements. The foreign filing specialist is also responsible for ensuring that all PCT formality filing requirements are completed in a timely manner. The foreign filing specialist ensures that all PCT related client reporting is completed in a timely manner in accordance with turnaround or client requirements. The foreign filing specialist should review the PCT record to ensure it is complete prior to foreign filing.
  • Foreign National/Regional Phase Filings: The foreign filing specialist prepares the foreign filing options client reporting letter and monitors for receipt of instructions to file foreign national/regional application filings. This includes but is not limited to non-PCT filings, PCT direct filings, regional phase filings and EP validations. The foreign filing specialist instructs the foreign associate in advance of the filing deadline. The foreign filing specialist is responsible for securing a substantive acknowledgement of filing instructions in advance of expiration of all loss of right final filing deadlines.
  • Formality Documents: The foreign filing specialist obtains certified copies of priority documents as needed, and coordinates the signature and forwarding of all formal documents in compliance with the foreign patent office filing requirements. This includes but is not limited to Powers of Attorney, foreign language translations, sequence listings, formal drawings and entitlement or assignment documents.
  • Client Reporting: The foreign filing specialist is responsible for ensuring that all deadline and non-deadline client reporting is completed in a timely manner. They are responsible for being fully informed on client specific reporting procedures and client reporting turnaround standards of the practice group.
  • Virtual File Management and Upkeep: The foreign filing specialist is responsible for the maintenance and upkeep of their assigned virtual records.  They are responsible for ensuring that correspondence with the client and the foreign agent is timely uploaded so that files are complete and current.

Requirements

  • 3+ years of related work experience including proactive docket management.
  • Must have a full and current understanding of the laws, articles, and guidelines in the various foreign countries in order to interpret the correspondence received, understand the requirements that are identified and ultimately meet the deadline in a timely manner.
  • Demonstrate ownership and accountability for assigned docket, take initiative, follow-up and follow through.
  • Consistently produce a high-quality work product with unwavering attention to detail.
  • Ability to work under pressure, maintain a professional demeanor and focus on the task.
  • Ability to multi-task and prioritize work accordingly.
  • Ability to work in a team-based environment using effective communication skills.
  • Bachelor’s Degree.
 

How to Apply

Please click here to apply now.

At Foley Hoag, we welcome, develop, and celebrate talented and diverse individuals in an innovative, mutually respectful, and intellectually rigorous community, and bring unique perspectives to collaborative teams that deliver exceptional advice and craft bespoke legal solutions for our clients and our world. Foley Hoag LLP is an equal opportunity employer. This means that Foley Hoag LLP considers applicants for employment, and makes employment decisions without unlawful regard to sex, race, color, religion, citizenship, national origin, ancestry, sexual orientation, gender identity, age, marital or domestic partner/civil union status, military service, or veteran status, disability, and any other characteristic covered by applicable federal, state or local nondiscrimination laws. We value each person for their talents, expertise, experience, and perspective.