Patent Foreign Filing Specialist

Who We Are

ArentFox Schiff is an award-winning, globally recognized law firm that delivers sophisticated, innovative, and practical legal solutions to clients around the world. With more than 600 lawyers and policy professionals, ArentFox Schiff's expertise is sought out by Fortune 500s, start-ups, international governments, non-profits and trade associations, and private individuals.  Our work spans highly complex, global matters as well as the deeply personal issues that shape the lives of individuals and communities.

Why Join Us

At ArentFox Schiff, we know that diverse backgrounds produce different perspectives, richer thinking, and more creative solutions to the challenges our clients face. We hope you share that vision. Join us and take on the challenge of doing meaningful work while helping us build upon a culture that reflects our dedication to diversity, equity, and inclusion. We base all of our employment decisions on merit and do not discriminate on the basis of any legally protected characteristic.

Job Description

Join our Intellectual Property team in a detail-focused role where your expertise will help protect clients’ innovations around the world. As a Patent Foreign Filing Specialist, you will coordinate PCT, national phase, and direct foreign filings; manage critical deadlines; and communicate with attorneys, clients, foreign associates, and patent offices. This position is ideal for a proactive professional who takes pride in accurate, timely work and enjoys independently managing complex matters. The role reports to the Chief IP Officer.

What You’ll Do

·         Monitor and reconcile the foreign filing docket daily, proactively addressing upcoming deadlines and status dates.

·         Prepare timely status correspondence and follow up with attorneys, foreign associates, and clients to keep matters moving forward.

·         Update docket dates using attorney and foreign associate guidance, established procedures, and sound judgment.

Coordinate Foreign Filing Matters

·         Prepare documents required to satisfy foreign filing formalities, including coordinating legalization through state authorities, consulates, and embassies.

·         Prepare PCT applications, transmittals, and Demands for Preliminary Examination, and respond to PCT and foreign associate communications.

·         Send clear, accurate instructions to foreign associates and patent offices for PCT, national phase, and direct non-U.S. filings.

·         Prepare client status reports, report official correspondence, and send reminders needed to obtain timely instructions.

Support Billing and Cost Management

·         Review foreign associate invoices for accuracy and partner with foreign associates and the Accounting Department to resolve discrepancies and reconcile statements.

·         Record time and billing descriptions for completed projects and notify Accounting when matters are ready to bill.

·         Prepare foreign filing cost estimates for clients.

Manage Foreign Annuities

·         Review annuity procedures and supporting documents to help ensure accurate, timely payments.

·         Monitor the annuity fee docket and serve as the firm’s liaison with annuity payment vendors.

Additional Responsibilities

·         Provide occasional after-hours support when needed to meet client schedules and filing deadlines.

·         Contribute to other team priorities and responsibilities as assigned.

·         Follow firm and IP Prosecution Support Department policies, procedures, and safety practices.

·         Meet established time-entry and timesheet deadlines.

·         Meet or exceed the annual billable-hour requirement of 1,536 hours.

What You Bring

·         At least two years of patent prosecution experience or one year of foreign filing experience.

·         Working knowledge of foreign and USPTO policies, procedures, and filing practices.

·         A bachelor’s degree is preferred; relevant experience may be considered in place of formal education.

·         Current knowledge of PCT, national phase, and U.S. and foreign patent filing requirements, office structures, online systems, rules, and procedures.

·         Proficiency with Microsoft Word and basic Excel skills; experience with Prokurio and ePCT is a plus.

·         Strong organizational and analytical skills, with the ability to manage multiple priorities, follow through, and meet deadlines independently.

·         Clear, professional communication skills and a collaborative, service-oriented approach.

·         A dependable, flexible work style and willingness to assist colleagues when needed.

This is an hourly, non-exempt position that is eligible for a generous overtime plan that exceeds minimum legal requirements.

The anticipated good-faith base salary range for this position is:

New York: $95,000 - $129,000

DC/Boston: $90,000 - $123,000

Chicago: $81,000 - $111,000

Your exact offer will be based on a variety of factors, including but not limited to, your experience, skills, and overall qualifications.  We also review compensation regularly against industry benchmarks and performance outcomes, so you can grow your career here with confidence—knowing your pay recognizes both your impact and our commitment to an equitable approach.

In addition to a competitive base salary, certain positions are eligible for a comprehensive performance-based bonus, payable monthly or annually.

Benefits

We know that the needs of our employees vary and can change throughout the different stages of life.  That’s why we offer a wide array of flexible benefit options designed to help you live healthy , live well , and live for tomorrow .  In addition to medical, dental, vision, profit-sharing, generous paid time off, and numerous other benefits, we also provide a flexible reimbursement account that helps pay for the things that contribute to your personal well-being, in your own way.

Commitment to Equal Opportunity

ArentFox Schiff is committed to equal employment opportunity and diversity in the workplace.  We base all employment decisions on merit and maintain a policy of considering all qualified applicants for employment without regard to race, color, religion or creed, sex, gender, sexual orientation, gender identity or expression, age, citizenship status, order of protection status, national origin, ancestry, medical condition, genetic information, marital status, physical or mental disability, parental status, source of income, military or veteran status, unfavorable discharge from military service, or any other basis protected by applicable law.  We will consider qualified applicants with criminal histories in a manner consistent with the San Francisco Fair Chance Ordinance.

* The job description is a general summary of the major duties.  It may not specify all duties, tasks, and assignments associated with a job.  It does not limit or in any way modify the right of management to direct, assign, and control the work of employees in a unit.  Accuracy, attention to detail, ability to work effectively in a team environment, and ability to work in an atmosphere of multiple projects and shifting priorities are requirements of all jobs at ArentFox Schiff LLP.  Additional job-related qualifications may be specified for some openings.  Job descriptions are subject to periodic review and modification.