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Patent Transfer Coordinator
New York, NYSourcePro Search has a fantastic opportunity for a Patent Transfer Coordinator. This is a hybrid remote role with our prestigious and large firm client and will support the IP team. This role offers a generous compensation package, excellent growth potential and a strong firm culture. Candidates can be based in Silicon Valley, New York, San Francisco, Washington DC or Seattle.
The Patent Transfer Coordinator will be responsible for reviewing and processing patent matters ensuring compliance with the Patent File Transfer procedures. The coordinator will perform file audits to assess the current prosecution status, review upcoming due dates, and prepare/file patent formalities and all other prosecution documents for incoming and outgoing transfer files.
Reporting to the Patent Client Services Manager, the ideal candidate will have a minimum of four (4) years of relevant patent prosecution and/or U.S. docketing work experience. Experience in a law firm setting is strongly preferred.
Responsibilities:
The Patent Transfer Coordinator will be responsible for reviewing and processing patent matters ensuring compliance with the Patent File Transfer procedures. The coordinator will perform file audits to assess the current prosecution status, review upcoming due dates, and prepare/file patent formalities and all other prosecution documents for incoming and outgoing transfer files.
Reporting to the Patent Client Services Manager, the ideal candidate will have a minimum of four (4) years of relevant patent prosecution and/or U.S. docketing work experience. Experience in a law firm setting is strongly preferred.
Responsibilities:
- Maintain a Patent File Transfer Tracking System.
- Follow firm guidelines in transferring-in and transferring-out patent prosecution files.
- Audit newly received patent files for current status, upcoming due dates and next action due.
- Audit files to be transferred-out of the firm, including review of pending due dates and communicate to new counsel.
- Prepare conflicts and new matter requests for transfer-in files.
- Research and correct chain of title information to obtain power of attorney documents for transfer-in files.
- Correspond with client and or foreign counsel as needed to obtain missing file documents, official correspondence or assignment information for transfer-in files.
- Prepare and file assignment documents, revocation and power of attorney documents, and application data sheets for transfer-in files.
- Prepare and file withdrawal of power of attorney documents, for transfer-out files (as needed).
- Monitor docket as needed to complete file transfer actions timely.
- Coordinate with the billing specialist, a final check of outstanding WIP and AR.
- Update client specific customer numbers when applicable.
- Purge files being transferred out of the firm and coordinate transfer with the Information Governance team.
- Forward transfer correspondence to new counsel for transfer-out files.
- Keep the attorneys and client teams apprised of new developments with all file transfers.
- Flexible and dependable with the ability to work overtime, as needed.
- Perform other duties as assigned.
- Proficiency in navigating some or all of the following PTO platforms: EFS, PAIR, EPAS, and WIPO.
- Working knowledge of US and Foreign patent rules and practices.
- Experience in preparing patent formalities for filing in the US Patent & Trademark Office (USPTO).
- Excellent researching skills with proficient experience in researching US and Non-US patent office websites.
- Proficient knowledge of Excel and IP docketing database programs.
- Accurate data entry skills, proven organizational abilities, and strong attention to detail.
- Proficient knowledge and usage of document management system.
- Multitask in a highly demanding, deadline-driven environment.
- Possess a high level of attention to detail.
- Take initiative and work both independently and in a team environment.
- Ability to proofread typed material for grammatical, typographical and spelling errors.
- Ability to type standard correspondence, memoranda and similar material in draft or final form from written material or dictation.
- Exemplary client service skills, with the ability to interact with various departments, all levels of firm executive personnel, vendors and contractors.
- Excellent written, verbal and organizational skills.
- Maintain and handle confidential and sensitive information with discretion.
- Promote effective work practices, work as a team member, and show respect for all firm personnel.
- Proficiency in MS Office applications.