Foreign Filing Specialist

About the role

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

• 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
• Proactive docket management: proactively reviews deadlines on their assigned docket, prepares documents in advance and proactively clears deadlines off the docket; 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: reviews the priority application record in advance of the PCT filing deadline; prepares and files the PCT application in accordance with filing requirements; ensures that all PCT formality filing requirements are completed in a timely manner; ensures that all PCT related client reporting is completed in a timely manner in accordance with turnaround or client requirements; reviews the PCT record to ensure it is complete prior to foreign filing
• Foreign national/regional phase filings: prepares the foreign filing options client reporting letter and monitors for receipt of instructions to file foreign national/regional application filings, including but not limited to non-PCT filings, PCT direct filings, regional phase filings and EP validations; instructs the foreign associate in advance of the filing deadline; responsible for securing a substantive acknowledgement of filing instructions in advance of expiration of all loss of right final filing deadlines
• Formality documents: 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, including but not limited to Powers of Attorney, foreign language translations, sequence listings, formal drawings and entitlement or assignment documents
• Client reporting: responsible for ensuring that all deadline and non-deadline client reporting is completed in a timely manner; responsible for being fully informed on client specific reporting procedures and client reporting turnaround standards of the practice group
• Virtual file management and upkeep: responsible for the maintenance and upkeep of their assigned virtual records; ensures that correspondence with the client and the foreign agent is timely uploaded so that files are complete and current
• Performing any general office administrative functions as necessary

Qualifications

• 3+ years of related work experience including proactive docket management
• 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

Schedule

Core working hours are Monday—Friday 9:00am—5:00pm ET. 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. The Foreign Filing Specialist must be available to work overtime when required to meet the demands of this position.

Pay

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.