IP International Patent Specialist (Annuities)

Cooley-posted 5 days ago
Full-time • Mid Level
Palo Alto, DC
1,001-5,000 employees
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Cooley is seeking an IP International Patent Specialist (Annuities) to join the IP Services team. Position summary : The IP International Patent Specialist (Annuities) leads annuity outsourcing efforts, coordinates client, foreign agent, and vendor annuity related tasks, and provides full support to patent attorneys and agents in filing and maintaining international and foreign national applications and patents. Specific duties and responsibilities include, but are not limited to, the following:

  • Actively encourage clients to outsource annuity and maintenance fee management in accordance with firm risk management requirements.
  • Support the outsourcing process by collaborating with the designated annuity vendors on client account set-up and data migration
  • Ensure all annuity and maintenance fees are timely paid until annuity responsibility has transitioned to the client
  • Interact with foreign agents to ensure they are aware of the client’s annuity payment preferences
  • Review and confirm that all annuity related correspondence is processed according to the firm’s risk management procedures
  • Collaborate with clients to identify, establish, and maintain data integrity, to implement consistent internal processes and applicable database management in support of client and firm objectives
  • Review, research and resolve data discrepancy reports from the annuity vendors, foreign agents and clients as requested
  • Regularly audit annuity deadlines and information in Cooley systems for accuracy and completeness
  • Prepare client specific annuity reports
  • Confirm and transmit annuity payment instructions
  • Reconcile payment confirmation reports and provide preliminary approval of invoices
  • Coordinate with the IP Client Transition Team to ensure annuity payment preferences are confirmed
  • Timely respond to client requests for budget information
  • Coordinate with IP professional staff and practitioners as well as clients and foreign associates, with respect to all international patent prosecution matters
  • Monitor due dates and provide timely reminders to responsible attorneys/agents and clients.
  • Responsible for meeting all assigned foreign due dates
  • Prepare and file PCT applications, foreign direct applications, foreign national phase applications, foreign design applications, and foreign divisional applications
  • Examine all incoming PCT actions and ensure timely reporting, prepare responses to invitations, requests under 92bis, publications, article 19/34 amendments, chapter II demands, search reports, written opinions, POA’s, IPRP’s and other formal communications
  • Handle all foreign actions and reporting including formalities (e.g., POA’s, assignments, declarations, certified copies of formal documents, etc.), status checks, requests for examination, publications, voluntary amendments, responses to official actions, notices of allowance, issue fee payments, grant, and patent term extensions
  • Analyze correspondence received from USPTO, WIPO, foreign national patent offices, and foreign associates to ensure accuracy of information for docketing purposes
  • Sustain working knowledge of changes in international patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
  • Generate foreign prosecution cost estimates and patent prosecution budgets as requested
  • Conduct worldwide searches to create portfolio status charts as requested
  • Complete administrative tasks including request docket numbers, create new files, maintain client data rooms, run patent reports, transfer in/out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Review daily and weekly docket reports provided by the central IP Docketing Department.
  • Provide detailed docket annotations related to upcoming dates on a daily basis
  • Maintain double docket
  • Assist practitioners on all aspects of foreign filing and prosecution, as requested
  • Available to work overtime, as required
  • After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
  • 3+ years experience in an IPS or equivalent role including direct responsibility for the tracking and payment of annuities, interacting with annuity vendors, and outsourcing responsibility for annuity payments.
  • Bachelor’s Degree
  • Previous law firm experience
  • Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
  • Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)
  • Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs
  • Ability to work independently and under pressure/tight time constraints
  • Creative and entrepreneurial approach to problem-solving and process improvement
  • Flexible and agile, ability to reprioritize with changes in the business
  • Strong initiative and a get-it-done attitude
  • Excellent communication and interpersonal skills
  • Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.
  • We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and/or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and/or adults and other parental support benefits.
  • In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off (“PTO”) and 10 paid holidays each year.
  • We provide generous parental leave and fertility benefits.
  • New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.
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