Foreign Filing Specialist

Sughrue Mion, PLLC, a leading international Intellectual Property law firm located in Washington, DC, is searching for a Foreign Filing Specialist to assist in preparation and processing international patent applications.

Essential Functions:

• Monitor foreign docket on a weekly basis with particular attention to detail.
• Carefully review and scrutinize mail and emails with particular attention to due dates and deadlines.
• Email docket updates/changes to Docketing Dept., attorneys, clients and foreign counsel in accordance with office procedure, and as directed by working attorney.
• Correspond directly and with accuracy to client, attorney and foreign counsel requests and queries relating to foreign matters as directed by working attorney, and in accordance with office procedure.
• Ability to draft clear and concise correspondence.
• Prepare cost estimates for foreign filing, prosecution and grant matters.
• Prepare and file PCT REQUESTs, Chapter II Demands, Requests for 92bis Amendments, Responses to Invitations to Correct as directed by working attorney, and in accordance with office procedure.
• Prepare instruction letters for filing in non-PCT countries, National stage entries, direct foreign filings, and European validations as directed by working attorney, and in accordance with office procedure.
• Prepare formal papers for each foreign patent application filed in accordance with rules and requirements in each specific country.
• Review foreign counsel invoices paying particular attention to monetary exchange rates, forward to Accounting Dept. for payment, and bill clients in accordance with office procedure with attention to attorney time, activities and disbursements.
• Instruct payment of renewal/maintenance fees relating to foreign cases in accordance with office procedure.
• Save foreign correspondence into FileSite in accordance with office procedure.
• Work independently with little supervision.
• Good work attendance and punctuality.
• Other duties as instructed.

Education and Experience:

• Some college preferred. Additional secretarial, business or technical training helpful
• Minimum of 1 year of international patent prosecution experience or 2-5 years patent firm experience
• Knowledge of ePCT (Preferred) Knowledge of EFS filings at the USPTO required
• Familiarity with Design Filings via the Hague

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Position Location: This position is located in Washington, DC. Sughrue is currently operating in a hybrid mode with in-house options as required, as well as remote.