Foreign Filing Specialist

Sughrue Mion PLLC; Washington (District of Columbia); Hybrid; USD 55,000 - 85,000; Full time

Job summary

Sughrue Mion PLLC, a leading international Intellectual Property law firm in Washington, DC, seeks a Foreign Filing Specialist to assist in preparation and processing international patent applications. The role requires handling PCT filings, Hague design filings, and national stage entries while coordinating with foreign counsel and clients.

Qualifications include 1 year of international patent prosecution experience or 2–5 years in a patent firm, knowledge of ePCT and EFS filings, and

Qualifications

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

Responsibilities

• Monitor foreign docket weekly with attention to deadlines.
• Review mail and emails for due dates and deadlines.
• Prepare and file PCT Requests, Chapter II Demands, and related documents as directed.
• Prepare instruction letters for filing in non-PCT countries and national stage entries.
• Review foreign counsel invoices and bill clients accordingly.
• Save foreign correspondence into FileSite.
• Work independently with little supervision.

Skills

International patent prosecution

Attention to deadlines

Client communication

Docketing coordination

Education

Some college or secretarial/business/technical training

Experience in patent law environment

Tools

ePCT

EFS filings (USPTO)

Job description

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

I

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.