Graham Staffing Services offers an excellent opportunity with a large Washington, D.C. law firm as a Patent Prosecution/Foreign Filing Specialist. Metro accessible! Beautiful office! Salary from the $60Ks to $80Ks depending on experience.
Requirements:
· Minimum of 5 years of international prosecution and extensive foreign filing experience required.
· Extensive experience with MS Word and Excel, Nuance and/or Adobe
· Must be able to create legal documents for packages that a layman could understand
· Working knowledge of foreign docketing, experience with public/private PAIR, extensive experience with national stage prosecution, and a thorough understanding of formality requirements.
· Superior communication skills
· Ability to work efficiently and flexibly in a fast-paced environment with tight deadlines
· Must be results-driven
· Exceptional attention to detail, organization and prioritizing skills required
· Excellent customer skills required to assist both external and internal clients in a professional, yet efficient way
Responsibilities:
· Prepare and file PCT applications (both via hand-carry and electronically). Ensures accuracy and completeness of all information; ensures finalized PCT applications adheres with the Patent Cooperative Treaty’s standards and regulations; understands and generates PCT Request Form 101; PCT Fee Sheet and other declarations (as needed) for completion of PCT initial filing. Prepares other documentations in response to Invitation to Correct Defects; Invitation to Additional Search; Invitation to Correct Defective Sequence Listings; Written Opinion and/or Chapter 2 Demands upon receipt of instructions from client(s). Ensures PCT prosecution documentation is completed (including recordation of Assignments and/or declarations) prior to the 30 month deadline for national stage entry.
· Working knowledge and experience with foreign docketing. Monitors filed PCT applications using public and/or private PAIR to ensure correspondence as issued by either USPTO/RO or EPO/RO is docketed internally; prepares draft client correspondence for FFD Manager’s review. Ensures that PCT applications have completed international examination and confirms Official Communications have been issued within PCT allotted time constraints. Official Communications would include Notifications regarding transmittal of priority documents, search copy, record copy, IPRPs, and WO/ISR. For Official Communications not issued, candidate must have experience to call appropriate Receiving Office staff members and inquiry regarding status of communications and/or application and forward the information to FFD Manager and assigned working/supervising attorney.
· Prepare draft instructional letters to corresponding foreign associates (in accordance with client’s instructions), including PCT document for national stage entries. Qualified candidate must ensure that PCT application has completed all prosecution and all relevant correspondence required for national stage entry is publicly available for transmission to appropriate foreign associate.
o Must have thorough understanding and working knowledge of formality requirements in order to ensure filing dates of national stage applications. Includes requesting formality documents (if not provided by foreign associate); prepares draft client’s correspondence for forwarding formality documents for execution; assigns internal due date (keeping in mind final foreign PTO deadline) for client’s execution; prepares correspondence to foreign associate to return executed formality documents to foreign associate for submission at foreign PTO. Coordinates with Docketing dept. to ensure all deadlines are accurately entered and cleared from docketing software.
· Prepare draft client’s correspondence for filed Responses and/or other communications (including Letters Patent) as received from foreign associate(s). Forwards correspondence upon supervisor’ review to client(s) in accordance to clients’ standing instructions. Soft dockets deadlines and/or reminders for foreign filing department internal usage.
· Prepare client’s reminders (including but not limited to: Request for Examination; maintenance fees; publication fees; issuance fees; allowance fees;). Soft dockets deadlines and/or reminders for foreign filing department internal usage. Drafts clients’ reminders for supervisor’s review in accordance to approaching deadlines.
· Monitor Foreign Filing Department daily docket. Works with working attorney and provides assistance as required to ensure deadlines are met.
· Compile prior art for submission to foreign associates for submission at foreign patent offices.
· Other duties as assigned.
To apply, click on the application link found below OR send an e-mail with your resume, cover letter and salary requirements as an MS Word 2000 - 2003 (.doc) attachment to directhire@grahamstaffingsvcs.com. Reference the Job ID followed by where you found the job listing.
