Cooley
International Patent Annuities Specialist
Cooley, Washington, District of Columbia, us, 20022
Cooley is excited to invite applications for the position of International Patent Annuities Specialist to join our IP Services team.
Position Summary : As an International Patent Annuities Specialist, you will take the lead in managing annuity outsourcing efforts, coordinating with clients, foreign agents, and vendors on annuity tasks, and providing comprehensive support to our patent attorneys and agents in filing and maintaining international and foreign national applications and patents. Your expertise will be essential in ensuring seamless operations and client satisfaction.
Annuities Specialist Responsibilities:
Encourage clients to delegate annuity and maintenance fee management while adhering to the firm’s risk management requirements. Collaborate with designated annuity vendors for client account setup and data migration.
Ensure timely payments of annuity and maintenance fees until responsibilities transition to clients.
Communicate with foreign agents to confirm clients' annuity payment preferences.
Review and ensure that all annuity-related correspondence aligns with the firm's risk management procedures.
Engage with clients to establish and maintain data integrity, implementing consistent internal processes and effective database management.
Investigate and resolve data discrepancy reports from annuity vendors, foreign agents, and clients.
Regularly audit annuity deadlines and information for accuracy in Cooley systems.
Compile and prepare client-specific annuity reports.
Confirm and transmit annuity payment instructions promptly.
Reconcile payment confirmation reports and offer preliminary invoice approvals.
Work closely with the IP Client Transition Team to confirm annuity payment preferences.
Respond to client requests for budget information in a timely manner.
International Patent Specialist (IPS) Responsibilities:
Coordinate international patent prosecution matters with IP professionals, clients, and foreign associates.
Monitor due dates, providing timely reminders to responsible attorneys/agents and clients, and ensure all assigned foreign due dates are met.
Prepare and file various patent applications, including PCT applications, foreign direct applications, and others as required.
Analyze incoming PCT actions for accurate reporting and prepare responses to various official communications.
Manage foreign actions including formalities, status checks, requests for examination, and patent term extensions.
Assess correspondence from various patent offices for docketing accuracy.
Stay updated on changes in international patent prosecution rules and recommend procedural adjustments as needed.
Generate cost estimates for foreign prosecution and assist in patent prosecution budget requests.
Conduct worldwide searches to create portfolio status charts.
Complete administrative tasks, including creating new files, maintaining client data rooms, and running patent reports.
Review daily docket reports for detailed annotations related to upcoming dates.
Maintain a double docket and assist practitioners with foreign filing and prosecution tasks.
Skills & Experience
Required:
Willingness to work overtime as needed.
Proficiency in Microsoft Office and firm applications following orientation.
3+ years of experience in an IPS role, specifically in annuity tracking, vendor interaction, and outsourcing responsibility for payments.
Preferred:
Bachelor's Degree.
Previous experience in a law firm.
Experience researching IP statuses in databases such as USPTO, WIPO, EPO, and others.
Understanding of USPTO procedures and patent regulations.
Competencies:
Strong customer service orientation with attention to detail and organization.
Independent worker capable of managing pressure and deadlines.
Creative problem-solver with a proactive approach to process improvement.
Flexible to reprioritize based on business needs.
Results-oriented with a strong initiative.
Excellent communication and interpersonal skills.
Cooley offers a competitive salary and an exceptional benefits package aimed at promoting fair employment practices. Join us!
The expected hourly pay for this position, based on a full-time schedule, is $46.50 - $68.00 ($96,720.00 - $141,440.00 annually). Note that final offers will depend on geographic location, relevant experience, and individual skill sets.
Cooley provides a comprehensive range of elective benefits including medical, dental, vision, flexible spending accounts, and generous paid time off, among others. Detailed orientation on benefits will be provided to new employees.