Foreign Filing Specialist

Overview

Who We Are

Arent Fox Schiff is an award-winning, globally recognized law firm that delivers sophisticated, innovative, and practical legal solutions to clients around the world. With more than 600 lawyers and policy professionals, our expertise is sought by Fortune 500s, start-ups, international governments, non-profits and trade associations, and private individuals. Our work spans highly complex, global matters as well as the deeply personal issues that shape the lives of individuals and communities.

Why Join Us

We believe diverse backgrounds produce different perspectives and richer thinking. Join us to do meaningful work and contribute to a culture focused on diversity, equity, and inclusion. We base employment decisions on merit and do not discriminate on the basis of any legally protected characteristic.

This position is available in any of our office locations – Boston, Chicago, Los Angeles, New York, Washington, DC, or San Francisco.

The Foreign Filing Specialist will prepare and coordinate PCT and direct national reporting to the Client. This role will manage and coordinate an ongoing docket of foreign filing reporting, coordinating and communicating with patent foreign filing specialists, attorneys and clients. The role works with patent foreign filing specialists firmwide to ensure work product is accurate and of the highest quality. Researches and analyzes issues as assigned by patent foreign filing specialists, timekeepers and Chief IP Officer related to foreign filing.

• MONITORS THE FOREIGN FILING DOCKET

  Reviews the foreign docket on a regular basis to ensure deadlines are met and the main docket is reconciled daily. Takes initiative to prepare letters in response to status dates and decides on moving soft dates based on input from timekeepers and country responsiveness.

• COMPLETES COMPLEX AND SPECIALIZED SUPPORT FUNCTIONS RELATED TO FOREIGN FILING

  Prepares documents for formalities, legalizing documents through appropriate state authorities, consulates and/or embassies.

  Prepares PCT applications, transmittals, Demands for Preliminary Examination and responses to Invitations to Correct Defects or other PCT and foreign associate communications.

  Prepares and forwards instructions to foreign associates and foreign patent offices, including PCT, national phase and direct non-U.S. filings.

  Prepares client status reports upon request and reports all official correspondence to clients, sending reminders to obtain instructions in a timely manner.

• RESPONSIBLE FOR BILLING ACTIVITIES ASSOCIATED WITH FOREIGN FILING

  Reviews foreign associate bills for services rendered and codes the bills for accounting. Contacts the foreign associate if the bill is inaccurate. Works with Accounting to review and reconcile statements from foreign associates.

  Enters time and billing descriptions in the Firm's billing system for projects completed. Notifies Accounting when a project is completed and ready for billing.

  Prepares foreign filing estimates for clients.

• MONITORS THE PAYMENT OF FOREIGN ANNUITIES

  Reviews procedures and document preparation for payment of annuities. Monitors the annuity fee docket to ensure deadlines are met. Acts as firm liaison with vendors providing annuity payment services.

• Works as needed after regularly scheduled hours to meet deadlines and client schedules as directed by the responsible timekeeper.
• Assists with additional duties as assigned.
• Adheres to the firm s policies and procedures and those for the IP Prosecution Support Department.
• Meets all time entry and timesheet deadlines as requested by the IP Department or Accounting.
• Meets or exceeds a billable hour requirement of 1536 hours per annum.

Education

• B.A./B.S. preferred. Related work experience may be used in lieu of formal education.

Experience

• Requires a minimum of 2 years of patent prosecution experience or 1 year of foreign filing experience.

Knowledge, Skills, Abilities

• Working knowledge of foreign and USPTO policies and procedures.
• Knowledge of PCT and national patent filing policies and procedures.
• Knowledge of US and foreign patent office structure, system, rules and procedures.
• Knowledge of US and foreign patent online sites and related websites.
• Strong computer skills, including Word and Excel. Some experience with IP Global Estimator and E-PCT preferred.
• Excellent organizational skills; ability to manage multiple projects and meet deadlines.
• Ability to work independently and communicate effectively.
• Reliable, flexible, and willing to assist others.

We offer a wide array of flexible benefit options designed to help you live healthy, live well, and live for tomorrow. Benefits include medical, dental, vision, profit-sharing, generous paid time off, and a flexible reimbursement account. This is an hourly, non-exempt position eligible for a generous overtime plan.

Salary – The anticipated good-faith base salary range for this…