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Carrot Peelers, Sales, Personality and Your Job Search
Law Firm
Legal Staff
Intellectual Property - Patent General
Min 5 yrs required
Patent Transfer Specialist The candidate will review and process patent files being transferred out of the firm. Responsible for the termination and closure of patent files. Communicate with working teams, clients, and new clients regarding outgoing matters, providing docket reports and portfolio lists. Draft outgoing transfer letters, forward transfer correspondence to new counsel or clients for transfer-out files and prepare and file withdrawal of power of attorney documents or change of correspondence documents. Create links for electronic files to be transferred. Send Notice of Intent to Withdraw for active clients, where applicable. Transfer files electronically and overnight to new counsel or client. Complete paperwork required for transfer out, working with the Records team. Follow-up with new counsel or client for acknowledgement of receipt of transfer. Audit files to be transferred out of the firm, including portfolio review, pending deadlines, and compare and reconcile system reports. Download prosecution histories from document management system into folders. Purge physical and electronic files being transferred out of the firm and coordinate transfer with the Records team. Coordinate the Notification of foreign associates of the transfer of responsibility, if applicable. Ensure that the annuity department is informed of the change in responsibility, notifying the third-party annuity vendor and canceling any pending annuity or maintenance fee payments. Prepare and file withdrawal of power of attorney documents, for transfer-out files, if needed. Terminate relationships with clients who pay maintenance fees only. Handle closures/termination for inactive clients. Coordinate with the billing specialist, a final check of outstanding WIP and AR and with the Docketing team to ensure final closure of matters in all systems. Perform other related duties as assigned. Must have a Bachelor's degree and/or paralegal certificate as well as have 5+ years of prior experience in a US and foreign patent prosecution, with high-level knowledge of rules, deadlines, and procedures. Should have proficiency with US and foreign patent and trademark office websites, ability to research and locate data and knowledge regarding a calendaring system (CPI) is required.
Job Requisition ID: R1083
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