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Job Title:  International Patent Assistant

Supervisor’s Title:  Office Administrator; IPS Designated Partner, IPS Specialist

Status:  Non-Exempt

Location: Orange County - this position depends upon the ability of the employee to work closely with attorneys and staff members during regularly scheduled hours.

 

General Summary:  Under direction of the International Patent Specialists, performs duties specific to the International Department.  This position requires the ability to work overtime, which often cannot be predicted in advance.

 

Responsibilities and Duties:

1.     Assist International Patent Specialist in the response to foreign associate/client requests.

1.1.    Prepare response letters to foreign associate regarding formal requirements and/or general bibliographic details.

1.2.    Prepare miscellaneous letters to clients and foreign associates as requested by IPS.

 

2.     Assist International Patent Specialist in the monitoring of IPS docket.

2.1.    Research files and iManage network for completion of basic procedural due dates.

2.2.    Instruct the completion of extension of docketed due dates as requested by IPS.

 

3.     Prepare documents necessary to complete formal requirements in Foreign Patent Offices under direction of International Patent Specialists.

3.1.    Prepare country specific formal documents.

3.2.    Prepare letters forwarding formal documents to client for execution.

3.3.    Prepare letters forwarding completed formal documents to foreign associate.

3.4.    Research need for follow-up or reminder communication to foreign associate concerning completion of formalities, filing requirements, and filing particulars.

 

4.     Prepare PCT client letters and assist in PCT prosecution under direction of International Patent Specialists.

4.1.    Prepare 30-Month and 30-Month Follow-up National Phase letters to clients (including national phase cost estimates). Contact working attorney or assistant for additional instructions on letters to client.

4.2.    Prepare and file Response to Invitation to Correct Defects and Invitation to Provide Declarations (including extension requests).

4.3.    Prepare and file miscellaneous Response and Follow-up Communications to the PCT Office concerning priority documents and change requests for PCT application (as needed).

 

5.     Order formal drawings.

5.1.    Photocopy informal drawings and drawing description, prepare memo to drafting department requesting formal drawings.

5.2.    Forward formal drawings to appropriate foreign associate.

5.3.    Maintain a “formal drawings” follow-up docket.

 

6.     Order priority documents.

6.1.    Complete deposit account order form and forward to PTO.  Contact PTO as appropriate for non-receipt of documents.

6.2.    Forward priority documents to appropriate foreign associate.

6.3.    Maintain a “priority document” follow-up docket>

 

7.     Carpe Diem.

7.1.    Maintain personal timesheets.

 

8.     Assist IPS Clerks in the preparation of Foreign Patent Filings and/or QC matters as requested by IPS.

 

9.     Other related duties as assigned by International Patent Specialists.   

 

Required Knowledge, Skills & Abilities:

1.     Basic knowledge of Foreign and PCT Patent Procedures.

2.     Ability to file using alpha-numeric system.

3.     Knowledge of Word & Windows.

4.     Ability to accurately type a minimum of 43 wpm.

5.     Ability to operate office machines including computer, photocopiers, and fax machines.

6.     Ability to analyze, organize, and prioritize case information.

7.     Ability to communicate effectively in both oral and written form.

8.     Must be able to lift and carry up to 15 pounds.

 

Education and Experience:

This position requires one year legal experience.  Experience with Word is preferred. Foreign patent experience is highly desirable.

Click Here to apply for an open position. Please take the time to complete our application in full. Incomplete applications will not be considered for employment. If you experience technical difficulties submitting the application, please email queries to: webmaster@kmob.com.