Foreign Filing Specialist

Who We Are

Arent Fox Schiff is an award-winning, globally recognized law firm that delivers sophisticated, innovative, and practical legal solutions to clients around the world. With more than 600 lawyers and policy professionals, Arent Fox Schiff's expertise is sought out by Fortune 500s, start-ups, international governments, non-profits and trade associations, and private individuals. Our work spans highly complex, global matters as well as the deeply personal issues that shape the lives of individuals and communities.

Why Join Us

At Arent Fox Schiff, we know that diverse backgrounds produce different perspectives, richer thinking, and more creative solutions to the challenges our clients face. We hope you share that vision. Join us and take on the challenge of doing meaningful work while helping us build upon a culture that reflects our dedication to diversity, equity, and inclusion. We base all of our employment decisions on merit and do not discriminate on the basis of any legally protected characteristic.

Job Description

This position is available in any of our office locations - Boston, Chicago, Los Angeles, New York, Washington, DC, or San Francisco

The Foreign Filing Specialist will prepare and coordinate PCT and direct national reporting to the Client. This role will manage and coordinate ongoing docket of foreign filing reporting, coordinating and communicating with patent foreign filing specialists, attorneys and clients. Works directly with the patent foreign filing specialists' Firmwide to ensure work product is accurate and of the highest quality. Researches and analyzes issues as assigned by patent foreign filing specialists, timekeepers and Chief IP Officer related to foreign filing.

ESSENTIAL DUTIES AND RESPONSIBILITIES*

• MONITORS THE FOREIGN FILING DOCKET
  
  Reviews the foreign docket on a regular basis to ensure that deadlines are met and the main docket is reconciled on a daily basis. Responsible for taking the initiative to prepare letters in response to status dates on the docket. Responsible for making a decision on moving soft dates on the docket based on input from the timekeeper and foreign associate or personal knowledge of the responsiveness of the particular country in question.
• COMPLETES COMPLEX AND SPECIALIZED SUPPORT FUNCTIONS
  RELATED TO FOREIGN FILING
  
  Prepares documents necessary to meet formalities requirements and legalizing documents through the appropriate state authorities, consulates and/or embassies.
  
  Prepares PCT applications, transmittals, Demands for Preliminary Examination and responding to Invitations to Correct Defects or other PCT and foreign associate communications.
  
  Prepares and forwards instructions to foreign associates and foreign patent offices, including PCT, national phase and direct non-U.S. filings.
  
  Prepares client status reports upon request.
  
  Reports all official correspondence to clients and sends appropriate reminders to obtain instructions in a timely manner.
• RESPONSIBLE FOR BILLING ACTIVITIES ASSOCIATED WITH FOREIGN FILING
  Reviews foreign associate bills for services rendered and codes the bills for accounting. Contacts the foreign associate if the bill is inaccurate. Works with the Accounting Dept. to review and reconcile statements from foreign associates.
  
  Enters time and the billing description in the Firm's billing system for projects completed. Notifies the Accounting Dept. when a project is completed and ready for billing.
  
  Prepares foreign filing estimates for clients.
• MONITORS THE PAYMENT OF FOREIGN ANNUITIES

Reviews the procedures and document preparation for payment of annuities.

Reviews the annuity fee docket on a regular basis to ensure that deadlines are met.

Firm liaison with the vendor(s) providing annuity payment services.

OTHER DUTIES AND RESPONSIBILITIES

• Works as needed after regularly scheduled hours to meet deadlines, client schedules and as communicated by the responsible timekeeper.
• The Foreign Filing Specialist is expected to assist with additional duties as assigned.
• Responsible for adhering to the firm's policies and procedures as well as any unique policies, procedures and safety practices for the IP Prosecution Support Department.
• Meet all time entry and timesheet deadlines as requested by the IP Department or Accounting.
• Meet or exceed a billable hour requirement of 1536 hours per annum.
MINIMUM QUALIFICATIONS

Knowledge/Skills/Abilities:
• Working knowledge of foreign and USPTO policies and procedures.
• Must be knowledgeable of and current with PCT and national patent filing policies and procedures.
• Possess knowledge of the US and foreign patent office structure, system, rules and procedures.
• Possess knowledge of US and foreign patent online sites and related websites.
• Requires good computer skills, including a moderate knowledge of Word and basic knowledge of Excel.
• Some experience with IP Global Estimator and E-PCT preferred.
• Requires excellent organizational skills; the ability to deal with several projects at once; and the ability to follow through as…