Foreign Filing Specialist
About The Position
Nelson Mullins, an AmLaw 60 firm, is seeking a Foreign Filing Specialist to support its Intellectual Property group, performing a variety of foreign patent prosecution-related tasks. This position reports to the Foreign Filing Supervisor 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. In this role, you will support the firm’s foreign patent prosecution efforts by preparing and filing PCT applications and handling related prosecution filings and client correspondence. You will work closely with foreign patent counsel to manage national and regional stage entries, including formality requirements and non-substantive actions throughout foreign prosecution. The position also involves filing direct foreign applications based on U.S. priority filings and ensuring all formalities are completed accurately and on time, with ongoing oversight throughout prosecution. You will assist with preparing client cost estimates to support budgeting and portfolio planning and may occasionally prepare and file 111(a) applications with foreign priority and 371 applications to enter the U.S. national stage. From time to time, you may attend client or foreign associate meetings related to foreign prosecution matters. You will also help manage foreign filing deadlines through docketing, communicate regularly with attorneys, clients, vendors, and foreign patent counsel, stay current on foreign intellectual property law to serve as a resource to the team, and help maintain the systems and procedures that support the Foreign Filing department.
Requirements
- 2+ years of direct foreign prosecution experience, preferably in a high-volume law firm environment
- Extensive knowledge and understanding of the foreign patent procurement process
- Familiarity with the necessary tools and resources to perform the required functions
- Strong organizational and prioritization skills
- Experience researching patent law rules and procedures
- Ability to synthesize and communicate information
- Excellent communication skills
- High attention to detail
- Adaptability and ability to handle a high-volume practice
- Proactive and team oriented
Responsibilities
- Preparing and filing PCT applications
- Handling related prosecution filings and client correspondence
- Managing national and regional stage entries
- Filing direct foreign applications based on U.S. priority filings
- Ensuring all formalities are completed accurately and on time
- Preparing client cost estimates to support budgeting and portfolio planning
- Preparing and filing 111(a) applications with foreign priority
- Preparing and filing 371 applications to enter the U.S. national stage
- Managing foreign filing deadlines through docketing
- Communicating regularly with attorneys, clients, vendors, and foreign patent counsel
- Staying current on foreign intellectual property law
- Maintaining the systems and procedures that support the Foreign Filing department
Benefits
- employees may be eligible for performance bonuses and benefits such as healthcare, retirement plans, and paid time off
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What This Job Offers
Job Type
Full-time
Career Level
Mid Level
Education Level
No Education Listed
