Talent.com
IP International Patent Specialist (Annuities)
IP International Patent Specialist (Annuities)Cooley LLP • Chicago, IL, United States
IP International Patent Specialist (Annuities)

IP International Patent Specialist (Annuities)

Cooley LLP • Chicago, IL, United States
[job_card.30_days_ago]
[job_preview.job_type]
  • [job_card.full_time]
[job_card.job_description]

IP International Patent Specialist (Annuities)

Cooley is seeking an IP International Patent Specialist (Annuities) to join the IP Services team.

Position summary : The IP International Patent Specialist (Annuities) leads annuity outsourcing efforts, coordinates client, foreign agent, and vendor annuity related tasks, and provides full support to patent attorneys and agents in filing and maintaining international and foreign national applications and patents. Specific duties and responsibilities include, but are not limited to, the following :

Annuities Specialist responsibilities :

  • Actively encourage clients to outsource annuity and maintenance fee management in accordance with firm risk management requirements. Support the outsourcing process by collaborating with the designated annuity vendors on client account set-up and data migration
  • Ensure all annuity and maintenance fees are timely paid until annuity responsibility has transitioned to the client
  • Interact with foreign agents to ensure they are aware of the client's annuity payment preferences
  • Review and confirm that all annuity related correspondence is processed according to the firm's risk management procedures
  • Collaborate with clients to identify, establish, and maintain data integrity, to implement consistent internal processes and applicable database management in support of client and firm objectives
  • Review, research and resolve data discrepancy reports from the annuity vendors, foreign agents and clients as requested
  • Regularly audit annuity deadlines and information in Cooley systems for accuracy and completeness
  • Prepare client specific annuity reports
  • Confirm and transmit annuity payment instructions
  • Reconcile payment confirmation reports and provide preliminary approval of invoices
  • Coordinate with the IP Client Transition Team to ensure annuity payment preferences are confirmed
  • Timely respond to client requests for budget information

International Patent Specialist (IPS) responsibilities :

  • Coordinate with IP professional staff and practitioners as well as clients and foreign associates, with respect to all international patent prosecution matters
  • Monitor due dates and provide timely reminders to responsible attorneys / agents and clients. Responsible for meeting all assigned foreign due dates
  • Prepare and file PCT applications, foreign direct applications, foreign national phase applications, foreign design applications, and foreign divisional applications
  • Examine all incoming PCT actions and ensure timely reporting, prepare responses to invitations, requests under 92bis, publications, article 19 / 34 amendments, chapter II demands, search reports, written opinions, POA's, IPRP's and other formal communications
  • Handle all foreign actions and reporting including formalities (e.g., POA's, assignments, declarations, certified copies of formal documents, etc.), status checks, requests for examination, publications, voluntary amendments, responses to official actions, notices of allowance, issue fee payments, grant, and patent term extensions
  • Analyze correspondence received from USPTO, WIPO, foreign national patent offices, and foreign associates to ensure accuracy of information for docketing purposes
  • Sustain working knowledge of changes in international patent prosecution rules, and facilitate with management and suggest procedural modifications to accommodate changes
  • Generate foreign prosecution cost estimates and patent prosecution budgets as requested
  • Conduct worldwide searches to create portfolio status charts as requested
  • Complete administrative tasks including request docket numbers, create new files, maintain client data rooms, run patent reports, transfer in / out of patent matters and other special projects as assigned with support of assigned administrative staff, where applicable
  • Review daily and weekly docket reports provided by the central IP Docketing Department. Provide detailed docket annotations related to upcoming dates on a daily basis
  • Maintain double docket
  • Assist practitioners on all aspects of foreign filing and prosecution, as requested
  • Skills & Experience

    Required :

  • Available to work overtime, as required
  • After orientation at Cooley LLP, exhibit proficiency in the Microsoft Office suite, iManage and other firm applications
  • 3+ years experience in an IPS or equivalent role including direct responsibility for the tracking and payment of annuities, interacting with annuity vendors, and outsourcing responsibility for annuity payments.
  • Preferred :

  • Bachelor's Degree
  • Previous law firm experience
  • Experience researching IP status and history in PTO databases, including USPTO systems (PAIR, PatentCenter, TSDR), WIPO Patentscope and Madrid Monitor, the EPO Patent Register, and EUIPO eSearch, as well as public databases in other jurisdictions
  • Possess working knowledge and keep abreast of rules according to USPTO procedures, 37 C.F.R., the Manual of Patent Examining Procedure (MPEP) rules, and the Trademark Manual of Examining Procedure (TMEP)
  • Competencies

  • Customer service oriented, as demonstrated by strong attention to detail, organization and ability to prioritize work tasks and manage deadlines based upon internal and external client needs
  • Ability to work independently and under pressure / tight time constraints
  • Creative and entrepreneurial approach to problem-solving and process improvement
  • Flexible and agile, ability to reprioritize with changes in the business
  • Strong initiative and a get-it-done attitude
  • Excellent communication and interpersonal skills
  • Cooley offers a competitive compensation and excellent benefits package and is committed to fair and equitable employment practices.

    EOE.

    The expected hourly pay range for this position with a work schedule of 40 hours per week is $46.50 - $68.00 ($96,720.00 - $141,440.00 annually). Please note that final offer amount will be dependent on geographic location, applicable experience and skillset of the candidate.

    We offer a full range of elective benefits including medical, health savings account (with applicable medical plan), dental, vision, health and / or dependent care flexible spending accounts, pre-tax commuter benefits, life insurance, AD&D, long-term care coverage, backup care for children and / or adults and other parental support benefits. In addition to elective benefit options, benefited employees receive firm-paid life insurance, AD&D, LTD, short term medical benefits as well as 20 days of Paid Time Off ("PTO") and 10 paid holidays each year. We provide generous parental leave and fertility benefits. New employees will attend a detailed benefit orientation to learn more about our many benefits and resources.

    [job_alerts.create_a_job]

    Patent Specialist • Chicago, IL, United States

    [internal_linking.related_jobs]
    Managing Partner, IT Strategy Consulting, HTTP (High-Tech Providers)

    Managing Partner, IT Strategy Consulting, HTTP (High-Tech Providers)

    Gartner • Chicago, IL, United States
    [job_card.full_time]
    Gartner's Consulting business is an.Gartner's industry-leading IT Research.From CIOs, to leaders in business and government, we help Gartner clients across enterprises translate insights into trans...[show_more]
    [last_updated.last_updated_30] • [promoted]
    SNF NP - Set your hours | Part Time

    SNF NP - Set your hours | Part Time

    Lions and Bears Staffing Partners • Zion, IL, United States
    [job_card.part_time]
    Infectious Disease Nurse Practitioner - Skilled Nursing Facilities.Base + performance-based bonuses.Flexible, self-scheduling model. Malpractice and clinical tools provided.We are hiring Infectious ...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Travel MRI Tech - $2,076 to $2,302 per week in Zion, IL

    Travel MRI Tech - $2,076 to $2,302 per week in Zion, IL

    AlliedTravelCareers • Zion, IL, US
    [job_card.full_time]
    AlliedTravelCareers is working with LRS Healthcare to find a qualified MRI Tech in Zion, Illinois, 60099!.Ready to start your next travel adventure? LRS Healthcare offers a full benefits package, 2...[show_more]
    [last_updated.last_updated_30] • [promoted]
    International Tax Manager

    International Tax Manager

    Plante Moran • Chicago, IL, United States
    [job_card.full_time]
    Our "we-care" culture is more than just a motto; it's a promise.From day one, we prioritize your growth, well-being, and success. You can count on us to support your career journey and help you achi...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Remote Paid Research Contributor (Hiring Immediately)

    Remote Paid Research Contributor (Hiring Immediately)

    Maxion Research • Highland Park, Illinois, US
    [filters.remote]
    [job_card.part_time]
    Join Our Part-Time Research Studies Today!.Are you eager to earn extra income from the comfort of your home? We are looking for motivated individuals to participate in paid research studies includi...[show_more]
    [last_updated.last_updated_30] • [promoted]
    APP, Advanced Practice Professional, IP Hematology / Oncology, Hazel Crest - Full Time

    APP, Advanced Practice Professional, IP Hematology / Oncology, Hazel Crest - Full Time

    Advocate Aurora Health • Hazel Crest, IL, United States
    [job_card.full_time]
    AMG Christ - Hematology / Oncology.Schedule Details / Additional Information : .Assesses, diagnoses, and determines / alters treatment and management plans appropriate for age, acuity and clinical conditio...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Travel Nurse RN - Intensive Care Unit (ICU) / Critical Care - $2,700 to $2,850 per week in Zion, IL

    Travel Nurse RN - Intensive Care Unit (ICU) / Critical Care - $2,700 to $2,850 per week in Zion, IL

    TravelNurseSource • Zion, IL, US
    [job_card.full_time] +1
    TravelNurseSource is working with Lancesoft Inc to find a qualified ICU / Critical Care RN in Zion, Illinois, 60099!.Night 3x12-Hour (19 : 00 - 07 : 30). Established in 2000, LanceSoft is a Certified MBE ...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Travel Physical Therapist - $1,930 per week

    Travel Physical Therapist - $1,930 per week

    MedAdventures • Zion, IL, United States
    [job_card.full_time]
    MedAdventures is seeking a travel Physical Therapist for a travel job in Zion, Illinois.Job Description & Requirements.MedAdventures Job ID #58241106. Pay package is based on 8 hour shifts and 40 ho...[show_more]
    [last_updated.last_updated_variable_hours] • [promoted] • [new]
    Immunology Specialist

    Immunology Specialist

    Syneos Health Careers • Evanston, IL, United States
    [job_card.full_time]
    You have what it takes : a competitive drive coupled with exceptional sales ability.In this role, you will be responsible for implementing the sales plan by delivering proficient sales presentations...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Infectious Disease Physician

    Infectious Disease Physician

    NorthShore University HealthSystem • Highland Park, IL, United States
    [job_card.full_time]
    Position : Infection Disease Physician.Endeavor Health seeks an Infectious Diseases physician to join its busy thirteen-member Infectious Diseases Division. The successful candidate will have complet...[show_more]
    [last_updated.last_updated_30] • [promoted]
    AVP, P&C Underwriting

    AVP, P&C Underwriting

    Argonaut Management Services, Inc • Chicago, IL, United States
    [job_card.full_time]
    Argo Group International Holdings, Inc.American National, US based specialty P&C companies, (together known as BP&C, Inc. Brookfield Wealth Solutions, Ltd.BWS"), a New York and Toronto-listed public...[show_more]
    [last_updated.last_updated_30] • [promoted]
    Travel Outpatient Physical Therapist - $2,050 per week

    Travel Outpatient Physical Therapist - $2,050 per week

    Core Medical Group • Highland Park, IL, United States
    [job_card.permanent] +1
    Core Medical Group is seeking a travel Outpatient Physical Therapist for a travel job in Highland Park, Illinois.Job Description & Requirements. Client in IL seeking Physical Therapist : PT.We are lo...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    SLP - In-Patient

    SLP - In-Patient

    Meda Health, LLC • Zion, IL, United States
    [job_card.full_time]
    [show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Infectious Disease Specialist (m / w / d)

    Infectious Disease Specialist (m / w / d)

    DOCTORS CHOICE PLACEMENT SERVICES, INC. • Chicago, IL, United States
    [job_card.full_time]
    Infectious Diseases - Northwest Indiana - 90 minutes from Chicago.Hospital is seeking a BC / BE Infectious Disease physician to join an established, successful independent practice of 6 physicians an...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Communications Specialist

    Communications Specialist

    The Planet Group • Lake County, IL, US
    [job_card.full_time]
    Support the planning, development, and execution of internal communications initiatives across multiple departments.Craft clear, engaging, and effective messaging for various communication channels...[show_more]
    [last_updated.last_updated_variable_days] • [promoted]
    Travel Physical Therapist - $2,276 per week

    Travel Physical Therapist - $2,276 per week

    CompHealth Inc. • Highland Park, IL, United States
    [job_card.permanent]
    Physical Therapist for a travel job in Highland Park, Illinois.Job Description & Requirements.Some locum assignments can be as short as a day, others, years. Some are far from home, others are local...[show_more]
    [last_updated.last_updated_30] • [promoted]
    IP Litigation Associate

    IP Litigation Associate

    Emerge Talent • Chicago, IL, US
    [job_card.full_time]
    [filters_job_card.quick_apply]
    Patent Litigation Associate – Intellectual Property & Technology (Junior to Mid-Level) Are you passionate about tackling high-stakes patent litigation for top-tier technology clients?.A l...[show_more]
    [last_updated.last_updated_30]
    Internal Medicine Physician

    Internal Medicine Physician

    Britt Medical Search • Munster, Indiana, United States
    [job_card.permanent]
    Seeking BE / BC Internal Medicine Physician to join talented team in NW Indiana.EMR system utilized in Inpatient & Outpatient settings. EPIC fully integrated HIMSS Stage VII (Only 5% of hospitals in c...[show_more]
    [last_updated.last_updated_30] • [promoted]