To provide a high quality, timely and comprehensive patent formalities service for clients, as directed by the Partner and Attorneys. This is a business critical role in a highly valued Formalities team.
1. Provide an administration service for the filing and prosecuting of British, International (PCT), European and other national patent countries.
2. Ensure patent and patent application deadlines are met to 100% levels of accuracy.
3. Ensure the legal and fee requirements of each application are met according to the requirements of the relevant country.
4. Progress actions required of partner and attorneys to meet the required deadlines.
5. Forward maintenance and renewal of all patents to our Renewals team.
Achieved by These Tasks:
A. Prepare, execute and, where appropriate, legalise, all the legally required documentation needed to support the ‘filing’ or registration of patents.
B. Arrange for timely filing of documentation, either directly with relevant national authorities or indirectly by instruction of a local attorney, to ensure that valuable intellectual property rights are not lost.
C. Maintain the computerised record system for patents and patent applications.
D. Continually track the current status of cases and maintain a due date diary system so deadlines are met efficiently and accurately.
E. Liaise with partners and attorneys, to ensure actions assigned to them are progressed within the required timescales.
F. Maintain a good understanding of patent law in the range of countries in which we regularly file patents; and a high level of specialised knowledge relating to patent formalities and their associated administration, in order to provide a professional service to clients.
G. Produce correspondence and communications for clients and patent authorities using standard templates and emails.
H. Develop practices and procedures within the guidelines established by the partner and attorneys to improve the efficiency of the service.
In addition to the executive functions of this role, the jobholder also provides an interface role between the office and the client for many of the 'house-keeping' activities essential for the maintenance of the good order of clients’ patent portfolios.
Most of these activities have non-extendable, and often tight, deadlines. Failure to meet these deadlines usually results in the loss of important intellectual property rights.
The jobholder is expected to maintain an up to date knowledge of legal requirements relating to patent formalities. These requirements, especially those relating to the payment of fees, may change on a frequent basis. Failure to maintain current awareness of the legal requirements will, at best, result in additional costs being incurred or, at worst, the loss of our client’s legal rights.
· Experience of the full range of patent formalities procedures and filing administration requirements for the UK, Europe and other countries.
· High levels of accuracy and attention to detail under time pressures.
· Able to use own judgement to process clients applications appropriately.
· Highly efficient and organised in approach to work.
· Able to quickly and effectively prioritise workload daily.
· Excellent awareness of timescales, able to work consistently and calmly within tight deadlines.
· Good at building rapport with partner and attorneys in order to influence their actions required for applications within timescales.
· Must be a team player, willing to work co-operatively with, and support, team members.
· Proactive enough to resolve problems on own initiative and improve processes.
· Confident with MS Word and Excel, able to quickly pick up internal systems.
· Although not an essential requirement, a CIPA qualification would be advantageous