Job Title:  International Patent Specialist

Supervisor’s Title:  International Patent Specialist Supervisor, Designated Partner

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, performs duties specific to the International Patent Department including preparing foreign patent applications, coordinating completion of formalities for foreign applications, and monitoring foreign docket.  This position requires the ability to work overtime, which often cannot be predicted in advance.

Responsibilities and Duties:

1.     Provide Foreign Patent Related Information to associates and staff as required.

1.1.    Research foreign patent novelty/disclosure requirements.

1.2.    Research filing requirements for foreign and PCT Patent Offices.

1.3.    Provide PCT procedural direction upon request.

1.4.    Research formal document requirements.

1.5.    Prepare foreign patent filing cost estimates and/or prosecution timelines.

2.       Provide Foreign Plant Variety Patent related information to foreign associate and staff as required.

2.1.    Research plant variety regulations for county, including novelty period, provisional and definitive registration, annuity, examination, and grant process.

2.2.    Prepare instruction and response letters to foreign associate with technical details for plant material, applicant, breeder, etc.

2.3.    Prepare reporting letters to client concerning status of plant examination in each country.

2.4.    Communicate with foreign associate and client on shipment and delivery requirements, costs, deadline and other details for plant material.

3.     Prepare U.S. patent applications for foreign filing.

3.1.    Prepare foreign filing instruction letter and assemble accompanying application papers.

3.2.    Prepare PCT Request form and assemble accompanying application papers.

3.3.    Prepare foreign filing confirmation letters to clients.

4.     Prepare National Phase filings from PCT applications.

4.1.    Identify PCT correspondence to accompany national phase filing instruction letters.

4.2.    Prepare national phase filing instructions to foreign associate.

4.3.    Prepare national phase filing confirmation letters to clients.

5.     Complete country-specific formal requirements.

5.1.    Prepare formal documents, i.e., Power of Attorney, Assignment, etc. with instruction letter to client.

5.2.    Instruct priority document requests.

5.3.    Maintain formal document follow up.

5.4.    Coordinate legalization of formal documents as necessary.

6.     Prepare PCT client letters and assist in PCT prosecution.

6.1.    Prepare and file Demand for Preliminary Examinations.

6.2.    Prepare and file Response letters to miscellaneous PCT Invitations.

7.     Prepare European Grant Letters.

     7.1 Research European National Phase cost estimates.

     7.2 Prepare letter to client regarding Approval of Text and Grant and Printing Fees.

     7.3 Monitor client response and provide foreign associate with instructions regarding approval of text,

           grant and printing fees, and list of designated countries for registration.

8.     Review foreign correspondence.

8.1.    Receive and review PCT and foreign patent correspondence from PCT authorities and foreign associate.

9.     Carpe Diem.

9.1.    Maintain personal timesheets.

10.  Monitor foreign docket and maintain personal follow-up.

11.  Instruct International Patent Assistant and IPS Clerk in the completion of foreign patent related tasks.

12.  Other related duties as assigned by supervisor.          

Required Knowledge, Skills & Abilities:

1.     General knowledge of PCT and foreign patent practice.

2.     Ability to file using alpha-numeric system.

3.     Knowledge of MS Word and at least six months prior experience with a word processing package.

4.     Ability to accurately type a minimum of 48 wpm.

5.     Legible cursive and printing.

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

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

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

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

Education and Experience:

A bachelors degree along with prior foreign patent experience is required.

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.

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