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International Patent Specialist

Job Type: Full time
Company/Firm: Knobbe, Martens, Olson & Bear
Location: San Diego/Del Mar, CA
Date posted: 11/19/10
Salary: Salary dependent on experience
Job Description:
Job Title: International Patent Specialist

Supervisor’s Title: International Patent Specialist Supervisor, Designated Partner, and Office Administrator

Status: Non-Exempt

Location: San Diego - this position depends upon the ability of the employee to work closely with attorneys and staff members during regularly scheduled hours.

General Summary: Under direction, performs duties specific to the International Patent Department including preparing foreign patent applications, coordinating completion of formalities for foreign applications, and monitoring foreign docket. Additionally will be responsible for handling examination desk and foreign status checks firm-wide. This position requires the ability to work overtime, which often cannot be predicted in advance.

Responsibilities and Duties:

1. Prepare U.S. patent applications for foreign filing.

1.1. Prepare foreign filing instruction letters and assemble accompanying application papers for direct filings in foreign jurisdictions.

1.2. Prepare PCT Request form and assemble accompanying application papers.

1.3. Upload PCT filing documents for electronic submission to USPTO via EFS Web.

1.4. Prepare foreign filing confirmation letters to clients.

1.5. Prepare formal documents, i.e., Power of Attorney, Assignment, etc. with execution instructions for client.

1.6. Instruct priority document requests.

1.7. Maintain formal document follow up and coordinate legalization of formal documents as necessary.

1.8. Prepare and file Demands for Preliminary Examination and responses to various PCT invitations.

2. Complete National Phase filings from PCT applications.

2.1. Identify PCT correspondence to accompany national phase filing instruction letters.

2.2. Prepare national phase filing instructions to foreign associate.

2.3. Prepare national phase filing confirmation letters to clients.

2.4. Prepare formal documents, i.e., Power of Attorney, Assignment, etc. with execution instructions for client.

2.5. Instruct priority document requests.

2.6. Maintain formal document follow up and coordinate legalization of formal documents as necessary.

3. Provide Foreign Patent Related Information to associates and staff as required.

3.1. Research foreign patent novelty/disclosure requirements.

3.2. Research filing requirements for foreign and PCT Patent Offices.

3.3. Provide PCT procedural direction upon request.

3.4. Research formal document requirements.

3.5. Prepare foreign patent filing cost estimates and/or prosecution timelines.

4. Prepare European Grant Letters.

4.1. Research European validation cost estimates.

4.2. Prepare letter to client regarding Approval of Text and Grant and Printing Fees.

4.3. Monitor client response and provide foreign associate with instructions regarding approval of text,

grant and printing fees, and list of countries for validation.

4.4. Obtain execution of any required Power of Attorney documents.

5. Handle examination desk.

5.1. Monitor docket for exam due dates firm-wide.

5.2. Correspond with clients and attorney to obtain instructions and any claim amendments for examination instructions.

5.3. Research examination requirements in foreign jurisdictions.

6. Manage foreign status checks firm-wide.

6.1. Monitor docket for foreign status check due dates firm-wide.

6.2. When appropriate, review foreign patent databases for status of applications or contact foreign associates requesting status.

7. Provide Foreign Plant Variety Patent related information to foreign associate and staff as required.

7.1. Research plant variety regulations for county, including novelty period, provisional and definitive registration, annuity, examination, and grant process.

7.2. Prepare instruction and response letters to foreign associate with technical details for plant material, applicant, breeder, etc.

7.3. Prepare reporting letters to client concerning status of plant examinationin each country.

7.4. Communicate with foreign associate and client on shipment and delivery requirements, costs, deadline and other details for plant material.

8. Carpe Diem.

8.1. Maintain personal timesheets.

9. Monitor foreign docket and maintain personal follow-up.

10. Instruct International Patent Assistant and IPS Clerk in the completion of foreign patent related tasks.

11. Other related duties as assigned by supervisor.

Required Knowledge, Skills & Abilities:

1. General knowledge of PCT and foreign patent practice.

2. Ability to file using alpha-numeric system.

3. Knowledge of MS Word and at least six months prior experience with a word processing package.

4. Must meet minimum testing requirements.

5. Legible cursive and printing.

6. Ability to operate office machines including computer, photocopiers and fax machines.

7. Ability to analyze, organize and prioritize case information.

8. Ability to communicate effectively in both oral and written form.

9. Must be able to lift and carry up to 15 pounds.

Education and Experience:

A bachelor’s degree along with prior foreign patent experience is required.

Qualified candidates may apply online at http://www.kmob.com/recruiting/positions_view.cfm?j=151

AA/EOE

Necessary Experience: 2+ to 5 Years
Contact: to view the full job listing please visit
http://jobview.monster.com/International-Patent-Specialist-Job-San-Diego-Del-Mar-CA-US-93842578.aspx

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