Patent Specialist

4 weeks ago

Chennai, Tamil Nadu, India One Stop for EB1A Full time

Remote Role

Agreement and NDA's required on timelines and cost

Long term need

Role Overview

The Patent Filing & Grants Specialist is responsible for managing the complete lifecycle of patent acquisition from idea disclosure to grant. This includes conducting patentability searches, coordinating with inventors and attorneys, preparing application materials, filing with national and international patent offices, tracking timelines, and ensuring successful grant of design and utility patents. The role covers UK Design, German Utility, and US Design & Utility patents.

Key Responsibilities

1. Patent Search & Analysis

  • Conduct preliminary prior art searches using patent databases (e.g., Espacenet, USPTO, WIPO Patentscope, DPMAsearch).
  • Summarize search results and assess novelty against existing patents and publications.
  • Maintain search reports for reference and attorney review.

2. Application Preparation

  • Collect invention disclosures from inventors.
  • Work with inventors to refine descriptions, claims, and diagrams.
  • Ensure drawings meet jurisdiction-specific requirements (UKIPO, DPMA, USPTO).
  • Prepare filing documents including abstracts, descriptions, claims, and figures.

3. Filing Management

  • File design and utility patents with appropriate offices:
  • UK Intellectual Property Office (UKIPO) for registered designs.
  • German Patent and Trade Mark Office (DPMA) for utility models.
  • United States Patent and Trademark Office (USPTO) for design and utility patents.
  • Manage online filing systems and payment of fees.

4. Coordination with Attorneys & Agents

  • Liaise with external patent attorneys in the UK, Germany, and USA.
  • Provide attorneys with all technical and visual documentation needed for drafting and prosecution.
  • Coordinate responses to Office Actions or examiner queries.

5. Tracking & Deadline Management

  • Maintain a Patent Filing Tracker with filing dates, deadlines, status updates, and renewal requirements.
  • Monitor prosecution timelines to ensure timely responses and renewals.

6. Grant & Post-Grant Management

  • Track application progress until grant.
  • Ensure proper publication and registration with relevant offices.
  • Maintain digital and physical records of granted patents.
  • Monitor renewal deadlines for design and utility patents.

7. Process Improvement & Reporting

  • Develop templates for invention disclosure forms, search reports, and filing checklists.
  • Create a standard operating procedure (SOP) for multi-jurisdiction filings.
  • Provide monthly/quarterly status reports to leadership.

Preferred Qualifications

  • Bachelor's degree in Engineering, Science, or Law (IP specialization preferred).
  • Experience in patent filing, searching, and prosecution processes.
  • Familiarity with UKIPO, DPMA, and USPTO filing systems.
  • Strong attention to detail and organizational skills.
  • Ability to work with international teams and manage multiple jurisdictions.

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