1. Descriptive Responsibilities towards U.S. Patent Procedures
Deal with assisting the U.S. based Patent Attorneys in PCT and National Stage
Filing and Prosecution;
Develops and maintains knowledge of Patent Office Rules and Procedures;
ToLiaise with the US Counterparts in meeting client requirements, receive,
process and send processed documents or reviews whenever requested and
within the timeframes;
Prepares Intellectual Property applications for filing as requested;
Prepares formal documents, forward to clients for signature;
Assist Attorneys by identifying appropriate relevant materials. Review office
actions and other communications from patent offices and prepare preliminary,
draft of responses and sending to the Attorneys within the Turnaround time for
filing with the PTO;
ToReview all incoming documents from the PTO for accuracy and correctness
and suggest corrective action wherever required;
Corresponds with clients regarding the status of applications;
Manage databases for the client with all the relevant details and documents and
ensure updation upon request or on the notification of a due date;
Works closely with the docketing staff to ensure all dates are docketed;
Preparation of Summary and Prosecution History as per the client requirement of
matters issued with the PTO and other documents as required by the client;
Toconduct a review of the prior art already cited in a matter as compared to the
requirement of the PTO and preparation of Information Disclosure Statements
(IDS) citing the art for filing as per client/attorney requirements and adhering to
the Turnaround Times applicable;
Obtains copies of patents and articles for IDS and conducts searches and
researches prior art;
Dealing with entire USPTO Patent Prosecution Stages;
Prepare various documents related to the Filing of Patents in various countries,
sending reminder emails to clients;
Organize and track important documents and deadlines, making them easily
accessible to attorneys;
Quality checking, assist in streamlining the process, develop and document
procedures;
Provide other support services to the paralegals in the United States.
2. Descriptive Responsibilities towards Foreign Patent Procedures
Maintain a tracker of due dates in case of Non-US matters and liaise with the
foreign agents in managing them and sending out periodic reminders or upon
urgent requests
Instruct Foreign Associates for National Stage Filings on behalf of US;
Works as part of foreign filing team to provide firm-wide service in all aspects of
the foreign patent filing process;
Organize/manage docket for foreign filing prosecution to ensure timely
completion of required actions;
Communicates with domestic and foreign associates, as well as with practitioners
in the firm, concerning foreign patent filing rules;
Assist attorneys with projects related to foreign applications/patents as needed;
Prepares documents required to process and complete PCT, direct, and national
phase filings in foreign countries;
Prepares correspondence to the PCT/US Receiving Office and International
Bureau such as PCT 101 form;
Monitors filing related deadlines; prepares necessary documents needed to
complete; filing procedures, such as, name change, power of attorney and
assignment documents.
Corresponds with clients and foreign associates regarding foreign matters.
Descriptive Responsibilities towards Projects
Prepare project plan and obtain management approval of the project plan.
Apply project resources (manual or automation processes) according to the
approved project plan.
Analyze risk and instigate avoidance activities. Establish contingency plans and
identify trigger events and responsibility for initiating corrective action.
Track and report on progress to plan.
Keep all stakeholders informed of progress and issues.
Assure timely adaptive action is taken.
Establish and publish clear priorities among project activities.
Responsibilities towards Team Handling
Manage daily work allocation to the team members as per the TAT and
deliverables
3. Coordinate with internal and external customers as necessary
Familiarize the team members with the customer needs, specifications, targets,
the development process, design standards, techniques and tools to support task
performance
Ensure that the quality of work generated within the team is of a high standard
and deliverables prepared, are meeting and exceeding clients requirement
consistently
Quality reviews/ monitoring of the work delivered
Conducts refresher trainings, coaching and mentoring sessions at the
team/individual level
Time & Motion Study (semi-annually) to identify and removal of Non Value Adds
Effectively plans leaves based on business requirements