Global Patent Filing and Prosecution Specialist

1 day ago

Lucknow, Uttar Pradesh, India beBeePatent Full time ₹ 8,00,000 - ₹ 12,00,000

Global Patent Filing and Prosecution Specialist

Elevate your career by joining our innovative team of professionals who deliver cutting-edge solutions to clients worldwide. With a presence in over 45 countries across five continents, we excel in leveraging state-of-the-art technology, artificial intelligence, and unparalleled subject matter expertise to elevate our clients' business impact and strategic decision-making.

About Intellectual Property and Research & Development:

We are a leading global provider of innovation intelligence and IP solutions. Our global team of world-class IPR&D analysts and innovation consultants work with a large customer base of leading Fortune 200 active clients offering insights, research, advisory, and consulting services to create some of the world's most advanced products. With two decades of expertise across diverse domains and search types, our unique in-house research development and innovation intelligence team comprising patent analysts, innovation intelligence specialists, technical specialists, licensing analysts, patent agents, and IP docketing specialists have a deep understanding of global regulatory trends and are adept at handling large patent portfolios.

Responsibilities:

  • Support attorneys in global patent filings and prosecution
  • Update and maintain daily dockets for clients worldwide and follow up on patent and trademark application filings, prosecution, etc. with clients
  • Update software databases, formulate and send emails, and communicate with clients/attorneys over conference calls
  • Prepare PTO documents, e.g., Information disclosure statements, patent assignments, declarations, power of attorneys, title amendments worldwide, etc.
  • Identify and/or verify patent family members via PTO registers and commercial databases
  • Check bibliographic, assignment, and priority details from PTO registers, file histories, and assignment databases
  • Evaluate patent portfolios of target companies
  • Identify and/or verify patent family members via PTO registers
  • Proofread patent documents and identify errors introduced by patent offices and/or applicants
  • Conduct trademark pre-filing searches in global jurisdictions
  • Conduct periodic trademark watches/monitorings for infringing trademarks in global jurisdictions
  • Conduct trademark portfolio audits and competitive analyses
  • Manage efficient and timely project delivery with high standards of quality

Requirements:

  • Paralegal and Docketing - IP Admin; relevant work experience in the field of Paralegal and Docketing
  • Knowledge of IP paralegal functions
  • Sound knowledge of patent prosecution laws in key jurisdictions i.e., US, EP, PCT, JP, CN, etc.
  • Knowledge of IP databases such as CPI, IP Manager, Anaqua, FoundationIP, Memotech, CPI, Patricia, Orbit, etc.
  • Able to ensure tasks within areas of responsibility are completed accurately and in a timely manner
  • Able to practice attentive and active listening skills
  • Able to identify proactive ways to contribute to Company goals & mission
  • Challenging current thinking by implementing new ways of working
  • Well-versed with MS Office with expertise in MS-Excel
  • Excellent communication and interpersonal skills

Benefits:

We offer a dynamic, growth-oriented, and meritocracy-based culture that prioritizes continuous learning and skill development, work-life balance, and equal opportunity for all.

Want to learn more about our culture?

Apply with your updated resume.

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