13 days old

IP Foreign Filing Specialist

Nelson Mullins Riley & Scarborough LLP
Boston, Massachusetts 02109
  • Job Type
    Other
  • Job Status
    Full Time

Overview

The Boston office of Nelson Mullins seeks a Foreign Filing Specialist to support its intellectual property group, performing a variety of foreign patent prosecution-related tasks.  This position reports to the IP Services Manager as a member of the Foreign Filing Department. The Foreign Filing Specialist will be responsible for all foreign filing and formalities throughout prosecution, including independent management of client dockets and foreign patent prosecution requirements.  The department is seeking a motivated candidate who is interested in continued learning and professional development and in assuming increased department responsibilities over time.

Responsibilities

  • Preparation and filing of PCT applications and all associated prosecution filings and client correspondence.
  • Entering national/regional stage via foreign patent counsel, all associated formality requirements and non-substantive actions during foreign prosecution.
  • Filing of direct foreign applications based on U.S. priority filings and management of formalities and requirements to ensure filing is completely in a timely manner and application is maintained throughout prosecution.
  • Preparation of client cost estimates for budgeting and portfolio planning purposes.
  • Occasional preparation and filing of 111(a) applications with foreign priority and of 371 applications to enter the U.S. national stage.
  • Occasional attendance at client or foreign associate meetings regarding foreign prosecution relevant topics and as needed.
  • Docket management of foreign filing deadlines for attorneys in the IP practice group. 
  • Excel in daily written and verbal communication to directly interface with attorneys, clients, outside vendors, and foreign patent counsel.
  • Responsibility to keep abreast of foreign intellectual property law and serve as a resource to the group regarding same. 
  • Responsibility to maintain support systems and administrative procedures and services for the Foreign Filing department.

Requirements

Ideal candidate has 2+ years of direct foreign prosecution experience, preferably in a high-volume law firm environment.  Candidate must possess extensive knowledge and understanding of the foreign patent procurement process, including an understanding and familiarity with the necessary tools and resources to perform the required functions.  Candidate should have strong organizational and prioritization skills, experience researching patent law rules and procedures and the ability to synthesize and communicate this information, excellent communication skills, high attention to detail, adaptability and ability to handle a high volume practice, and should be proactive and team oriented. 

Categories

Industry

  • Legal Services
Posted: 2020-02-05 Expires: 2020-03-07

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IP Foreign Filing Specialist

Nelson Mullins Riley & Scarborough LLP
Boston, Massachusetts 02109

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