Description

The Temporary IP Specialist provides US and foreign patent administrative support to the Intellectual Property Department, ensuring the integrity, accuracy and timeliness of all related work.

ESSENTIAL FUNCTIONS:

• Prepare and file U.S. and PCT patent applications.
• Coordinate foreign patent application filings and prosecution with local counsel.
• Process and file responses to USPTO and WIPO formalities notices.
• Prepare formal papers, such as Declarations, Powers of Attorney and Assignments.
• Prepare and file Information Disclosure Statements.
• Compose draft Responses to Restriction Requirements and other patent Office Actions.
• Review, process, and report attendant documents, such as Official Filing Receipts, Notices of Recordation of Assignment, Notices of Publication, Office Actions, Notices of Allowance, Issue Notifications, Certificates of Registration, and Letters Patents.
• Maintain a daily docket for upcoming or current due dates.

ADDITIONAL FUNCTIONS:

• Other related duties, as assigned.

QUALIFICATIONS (EXPERIENCE, KNOWLEDGE, SKILLS AND ABILITIES):

Education:

• Associate’s Degree Required; Bachelor’s Degree preferred. A combination of education and experience will be considered in lieu of a degree.

Experience:

• Minimum three years related patent prosecution experience.
• E-filing experience required.

Knowledge, Skills, & Abilities:

• Extensive knowledge of current U.S. and foreign patent procedures.
• Proficiency with IT systems, specifically CPi docketing software, Microsoft Outlook and Word, IPDAS, and various online IP databases (USPTO, EPO, WIPO, etc.)
• Excellent written and verbal communication skills and strong problem-solving skills.
• Excellent, spelling, grammar, proofreading and editing skills.
• Ability to adapt to change and balance competing demands.
• Ability to work in a fast-paced, high-pressure environment.
• Ability to work independently and take initiative.
• Ability to maintain highest level of confidentiality and provide outstanding customer service to internal and external clients/contacts.
• Proven ability to conduct independent research.
• Ability to prepare and understand financial accounts as well as other financial and statistical reports.
• Ability to compose and disseminate correspondence as required.

WORK ENVIRONMENT & PHYSICAL DEMANDS:

This job operates in a clerical, office setting. This role routinely uses standard office equipment such as computers, phones, photocopiers, filing cabinets and fax machines.

PHYSICAL REQUIREMENTS

Sedentary work: Exertion of physical strength to lift, carry, push, pull, or otherwise move objects up to 10 pounds. Work involves sitting most of the time. Walking and standing is often necessary in carrying out job duties.

VISUAL ACUITY

Worker is required to have close visual acuity to perform an activity such as: preparing and analyzing data and figures; transcribing; viewing a computer terminal; extensive reading.

DISCLAIMER

Fox Rothschild LLP is under no obligation to provide sponsorship for this position. Applicants must be currently authorized to work in the United States on a full-time basis now and in the future.

The above is intended to describe the general content of and requirements for the performance of this job. It is not a contract or employment agreement and is not to be construed as an exhaustive statement of all functions, responsibilities, or requirements the employee may be required to perform, and the employee may be required to perform additional duties. Additionally, management reserves the right to review and revise the job description at any time. Employment with the firm is at-will. Employees must be able to satisfactorily perform all of the essential functions of the position with or without a reasonable accommodation. If an accommodation request would cause an undue hardship or a safety concern, the individual may not be eligible for the position.