Foley Hoag seeks a Foreign Filing Specialist with a solid understanding of the International and Foreign Patent Office rules, procedures, and guidelines. The Foreign Filing Specialist must be able to dynamically apply their knowledge and skills in proactively managing their assigned clients and associated docketed deadline and must demonstrate ownership and accountability for filing formality documents in their assigned cases. Responsibilities include but are not limited to filing patent applications internationally (PCTs) and in various foreign countries (both regional and national), ensuring all formality filing requirements are completed in a timely manner, maintaining the virtual record file and providing support to the attorneys/agents on the foreign filing process. The Foreign Filing Specialist must be available to work overtime when required to meet the demands of this position. In addition, they must perform any general office administrative functions as necessary.
This role is hybrid eligible, with on-site presence in our Boston office required at least two days per week. Specific on-site days will be determined by your supervisor. Core working hours are Monday—Friday 9:00am—5:00pm ET.
Responsibilities
- Proactive Docket Management: The foreign filing specialist proactively reviews deadlines on their assigned docket, prepares documents in advance and proactively clears deadlines off the docket. The foreign filing specialist liaisons with the attorneys/agents to ensure all final deadlines are accounted for and cleared off the docket prior to the final loss of rights deadline.
- PCT Filings: The foreign filing specialist reviews the priority application record in advance of the PCT filing deadline. The foreign filing specialist prepares and files the PCT application in accordance with filing requirements. The foreign filing specialist is also responsible for ensuring that all PCT formality filing requirements are completed in a timely manner. The foreign filing specialist ensures that all PCT related client reporting is completed in a timely manner in accordance with turnaround or client requirements. The foreign filing specialist should review the PCT record to ensure it is complete prior to foreign filing.
- Foreign National/Regional Phase Filings: The foreign filing specialist prepares the foreign filing options client reporting letter and monitors for receipt of instructions to file foreign national/regional application filings. This includes but is not limited to non-PCT filings, PCT direct filings, regional phase filings and EP validations. The foreign filing specialist instructs the foreign associate in advance of the filing deadline. The foreign filing specialist is responsible for securing a substantive acknowledgement of filing instructions in advance of expiration of all loss of right final filing deadlines.
- Formality Documents: The foreign filing specialist obtains certified copies of priority documents as needed, and coordinates the signature and forwarding of all formal documents in compliance with the foreign patent office filing requirements. This includes but is not limited to Powers of Attorney, foreign language translations, sequence listings, formal drawings and entitlement or assignment documents.
- Client Reporting: The foreign filing specialist is responsible for ensuring that all deadline and non-deadline client reporting is completed in a timely manner. They are responsible for being fully informed on client specific reporting procedures and client reporting turnaround standards of the practice group.
- Virtual File Management and Upkeep: The foreign filing specialist is responsible for the maintenance and upkeep of their assigned virtual records. They are responsible for ensuring that correspondence with the client and the foreign agent is timely uploaded so that files are complete and current.
Qualifications
- 3+ years of related work experience including proactive docket management.
- Must have a full and current understanding of the laws, articles, and guidelines in the various foreign countries in order to interpret the correspondence received, understand the requirements that are identified and ultimately meet the deadline in a timely manner.
- Demonstrate ownership and accountability for assigned docket, take initiative, follow-up and follow through.
- Consistently produce a high-quality work product with unwavering attention to detail.
- Ability to work under pressure, maintain a professional demeanor and focus on the task.
- Ability to multi-task and prioritize work accordingly.
- Ability to work in a team-based environment using effective communication skills.
- Bachelor’s Degree.
Compensation range is $76,700 to $105,500 commensurate with related experience and qualification. The salary of the candidate selected for this role will be set based on a variety of factors, including but not limited to internal equity, experience, specialty, and training. The above salary range (or hiring range) represents the firm's reasonable estimate of the range of possible compensation at the time of posting.
About Foley Hoag
Founded in 1943, Foley Hoag has grown into an award-winning, international law firm that focuses on innovative industries and high-stakes litigation. From our offices in Boston, Washington DC, New York, Denver, and Paris, more than 300 lawyers and 300 professionals in business services exhibit authentic collegiality, genuine respect for each other, and the drive to deliver exceptional client service.
Since our founding, Foley Hoag has been a leader and catalyst for change in the legal industry and beyond. We value the diversity of perspectives and experiences that enrich our work and our world and seek to hire the best lawyers and business services professionals, regardless of religions, race, gender, or any other factor. We strive every day to ensure everyone at Foley Hoag feels valued through career development, affinity groups, mentorship programs, culture and community-building events and more. We offer a competitive compensation and benefits package, and a connected, challenging, professional, and fun place for you to thrive in the next chapter of your career.
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