Annuities Specialist III

Essential Functions

• Maintains annuity contact information and processes annuity system updates with exceptional accuracy.
• Independently establishes annuity management settings for client in CPi and AMS as needed, facilitates client annuity instructions, requests annuity/maintenance fee funds, and devises a plan to address complex annuity inquiries/requests for practice deviations.
• Independently processes monthly incoming packages from vendor to reconcile discrepancies between vendor and firm’s annuity database with exceptional accuracy.
• Independently processes with exceptional accuracy monthly outgoing packages to vendor, including processing client instructions submitted through AMS, verifying client fund information for pending instructions, organizing payment/special instructions for package month, and forwarding instructions with funds to vendor.
• Reviews, prioritizes, and processes with exceptional accuracy assigned correspondence received daily by Annuities.
• Independently prepares, electronically/manually mails, and tracks annuity/maintenance fee notices, reminder notices, and certified letters to clients with exceptional accuracy.
• Independently reviews and reports foreign annuity related correspondence from foreign patent offices concerning accumulated annuities and renewals to clients; and coordinates payment through associates for the firm's annuity clients unless otherwise instructed, and coordinates payments for non-annuity clients if explicitly instructed.
• Independently performs a comprehensive annuity review for incoming patent matters received through the file intake process and administers system updates with exceptional accuracy based on country requirements to ensure docket, annuity, and risk protocols are met.
• Independently coordinates with intake paralegals and responsible parties on annuity-related intake projects to obtain vital annuity information to meet firm docket, annuity, and risk protocols and independently resolves concerns.
• Independently manages annuity docket for assigned annuity/firm clients to ensure due dates are timely addressed and in accordance with standard practice, adds/updates actions remarks to reflect the status for transparency.
• Regularly assists Annuities Manager with research to promote improved processes or new procedures, and assists as requested with updates to annuity policy and procedural manuals to incorporate amendments to rules governing the annuity/maintenance fee process.
• Regularly notifies the Annuities Manager of system issues, procedural changes, and case-specific complications to ensure awareness and assists with a resolution as directed.
• Independently supplies annuity data and procedural information including country specific advice when requested by attorneys, support staff and clients.
• Regularly seeks clarification of intention where instructions or requests do not conform to the firm’s established annuity/risk policies and procedures and provides or coordinates basic guidance as appropriate.
• Regularly provides an exceptional level of quality assurance through annuity system checks.
• Strictly adheres to established hybrid/work schedule, and routinely exercises flexibility to provide department coverage and meet workload demands.
• Regularly keeps abreast of current rules and requirements through CPi Online announcements and foreign associate communications/bulletins as well as through research and information obtained through the Kluwer, MPEP, USPTO, WIPO, and other websites.
• Collaborates and coordinates with firm’s annuity vendor on fee increases, early payment options, unique client portfolio circumstances, and country law and practice changes impacting annuities as directed.
• Serves as a backup resource for team to support annuities manager.
• Regularly performs additional duties and completes projects as assigned with no direct oversight.

  Qualifications

  • Minimum of five to seven (5-7) years of direct work experience in patent annuities.
  • Bachelor’s degree or equivalent experience.
  • Strong knowledge of domestic and international intellectual property rules and annuity requirements.
  • Highly proficient in MS Suite, Aderant and iManage with solid computer and database management skills.
  • Experience with IP software applications such as CPi, AMS and IPDAS strongly preferred.
  • Exceptional oral and written communication skills and the ability to effectively communicate workflow and project updates.
  • Strong time management, prioritization, problem-solving, and organizational skills, and the ability to work effectively in a high-pressure environment.
  • Excellent people skills and ability to work effectively with different levels of constituencies.
  • Flexibility and capacity to respond calmly, efficiently, and effectively in stressful situations.
  • Able to adhere to established work schedule, but with flexibility required to respond to workload demands including overtime requests when needed.
  • Highly punctual and dependable with ability to meet set deadlines and work effectively under pressure.
  • Able to maintain confidentiality of matters and other firm business information.