Foreign Filing Specialist - posted 7/10/19

Foreign Filing Specialist - posted 7/10/19

Company Name: 
Morrison & Foerster LLP
Palo Alto
Salary Range: 
Job Summary: 

Morrison & Foerster LLP

ID: 7226
Job Posting Title: Foreign Filing Specialist
Location: Palo Alto

Morrison & Foerster LLP, an Am Law 50 law firm with 17 offices worldwide, has an opening for a Foreign Filing Specialist within our Patent Group in our Palo Alto office.

The Opportunity

It's a great time to join the firm, and in particular our highly successful Patent Group. This is a rare opportunity in our beautiful and convenient Palo Alto location

Under general direction the Foreign Filing Specialist provides foreign docket maintenance and follow-up. Processes foreign filings and originates reporting letters to clients. Monitors and reviews incoming mail and prepares and transmits foreign outgoing mail. Performs research, analysis, and other duties as assigned by patent attorneys, agents, analysts and paralegals. Ensures client service and satisfaction are attained in all areas of the position.


Primary Responsibilities

Foreign Filing and Coordination with Foreign Associates

  1. Prepare PCT and direct national application filings with reporting letters to clients. Analyze and research matters identified as needing additional attention. Notify responsible attorneys and staff of discrepancies or concerns.
  2. Take ownership for ongoing coordination with international agencies, receiving offices, and foreign associates for filing various applications. Succinctly and timely convey detailed information to team members, agencies, and foreign associates.
  3. Respond to underlying application and procedural issues; proactively handle unique situations. Initiate initial research or delegate/forward as needed. Follow up and communicate to be sure issue has been resolved.
  4. Act as a resource to attorneys and staff on PCT regulation and compliance.
  5. Develop relevant presentations for department on foreign filing procedures and changes, such as changes in the PCT or major jurisdictions such as the EP and JPO, and BRIC countries.

Foreign Docketing

  1. Maintain and monitor docket for all foreign actions, including attorney actions, applying strong, detailed knowledge of all foreign rules, including but not limited to the PCT, EPC, 37 C.F.R. Rules, and MPEP rules.
  2. Maintain and manage daily Red Book due dates for a large docket. Follow through personally and with attorneys/staff to ensure docket actions and deadlines are met.
  3. Review and monitor incoming foreign filing mail. Ensure that critical items receive appropriate response and that deadlines are entered in Red Book.

Ideal Candidate


Education and Experience

  1. Ideally one to three years of PCT and national patent filing experience preferred.

Teamwork and Applied Skills

  1. Excellent organizational and follow-through skills; ability to deal with several things at once under stressful situations.
  2. Strong attention to detail essential; ability to perform routine tasks and maintain concentration for long periods of time.
  3. Strong analytical skills and willingness to deal with and solve on-going unique situations.
  4. Ability to work independently, respond appropriately to urgency, and meet deadlines.
  5. Ability to effectively manage a large and on-going docket.
  6. Ability to communicate effectively and share ideas.
  7. Willingness to assist others with courtesy and cooperation is essential.
  8. Knowledge of Microsoft™ Office Suite.
  9. Reliability and dependability essential.
  10. Availability to work overtime; flexibility regarding work schedule required

Who We Are

At Morrison & Foerster, our culture is defined by our deeds. We're passionate about what we do. We're equally passionate about how we do it. We resist hierarchies and operate within a model of respect - for our colleagues, their ideas, and the differences that make us stronger. We encourage you to learn more about who we are, and what we do .

Should you find you're ready to do the best work of your life, we encourage you to let us know!

Morrison & Foerster is an equal opportunity employer. All qualified applicants will receive consideration for employment without regard to race, color, sex, religion, creed, ethnic or national origin, ancestry, age, disability, veteran or military status, marital status, pregnancy, sexual orientation, gender identity, domestic partner status, and other categories protected by applicable laws, or in retaliation for opposition to any practices forbidden under this policy.

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