Patent Filing Specialist

One of our large US law firm clients is on the search for a new Patent Filing Specialist to join their London office on an a permanent basis. The role will be very autonomous and will provide patent prosecution support to firm clients and patent practitioners. The focus of the role will be to provide client portfolio management including filing and communication making sure all aspect of work adhere to United Kingdom Intellectual Property Office (UKIPO), European Patent Office (EPO), European Union Intellectual Property Office (EUIPO) and World Intellectual Property Organization (WIPO) standards. Hours for this role are standard 9:30am- 5:30pm. The salary for this role will pay up to £50,000

Main duties include but are not limited to the following:

Oversee client administration for assigned patent portfolios, often with independent initiative;

• Maintain and monitor patent docket for each assigned client team and ensure all statutory and non-statutory due dates are met;

• Develop and maintain strong relationships with firm clients to deliver responsive and appropriate client service. Anticipate future requests based on understanding of client business needs;

• Apply specialized knowledge of client preferences to assemble, establish, maintain and adhere to specific guidelines for assigned clients;

• Apply detailed knowledge of patent prosecution, manage all aspects of administrative patent prosecution support for UKIPO/EPO/EUIPO/WIPO patent matters and to patent practitioners;

• Preparation and filing of e-filing packages for new applications (GBs, PCTs, EPs, SPC divisionals and designs), including payment of necessary official fees and charging of files;

• Preparation and filing of e-filing packages for official correspondence, Oppositions and Appeals uploading of documents for specialist client systems, where applicable;

• Prepare and send routine correspondence to clients reporting filings, including newly filed apps, responses to OA's and formality documents;

o Review and analyse all correspondence received from UKIPO/EPO/EUIPO/WIPO, foreign national patent offices, and foreign associates and take action as appropriate. See list below for examples. This includes forwarding actions to client for their review and/or response, responding to the communication or preparing draft responses for attorneys’ signature. Report to client and handle/respond to International Search Report

o Report to client and handle/respond to Invitation to Pay Additional Search Fees

o Report to client and handle/respond to Written Opinion of the ISA

o Report to client and handle/respond to International Preliminary Report on Patentability

o Article 19 Amendments

o Article 34 Amendments

8096310 v1

o Report to client and handle/respond to European Search Report, including confirming applicant’s desire to proceed further with application in light of EP SR

o Instruct agents to file amendments of any kind, at any time

o Report to client and handle/respond to foreign office actions

o Instruct foreign agents to file divisional applications

o Assist attorneys/agents with research of foreign matters as needed, e.g., international and foreign national rules and fees verification, and analysis of new rules and procedures.

o 12 month foreign filing reminders to clients on US applications, including obtaining instructions

o National Phase due date reminders to client, including obtaining instructions

o Request for Examination reminders to clients, including obtaining instructions

o Prepare POAs and signature documents

o Report non-substantive PCT notifications to client (Publication, Receipt of Search Copy, etc.)

• Order certified copies from national patent offices as required;

• Assist fee earner with research of foreign matters as needed, e.g., international and foreign national rules and fees verification, and relay new rules and procedures to IP Operations Manager/Supervisor;

• Assist with initiating client file transfers and disengaging clients to include review of client physical and electronic files;

• Participate in regular meetings with fee earners, and in some instances clients, to discuss portfolio status, upcoming deadlines, and outstanding administrative action items

• Prepare documents to support fee earner which may include transcribing from dictation, drafts, handwritten notes or oral instruction, redlining and proofreading end product;

• Review and handle pre-bills as required;

• Keep all IP files (electronic as well as paper where applicable) up-to-date and organized, including saving to client and matter specific emails and documents to iManage in accordance with firm policy and practice group standards. Ensure materials are forwarded to the Records Dept. as necessary;

• Providing cover during planned and emergency absences where necessary;

• Provide back-up support for colleagues to complete overflow work;

• Proactively mentor and regularly assist with training junior staff in department;

• All other duties as assigned or required.