[C] Intellectual Property Operations and Process Expert
[C] Intellectual Property Operations and Process Expert
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Job Description
1. IP Portfolio Management & Docketing:
Manage and maintain the patent and trademark portfolio data within the IP management system.
Docket all critical national and international deadlines including application filing dates office action responses annuity/renewal payments and other statutory deadlines.
Ensure the integrity and completeness of all data in IP management system including inventor information filing details and prosecution history.
Generate regular and ad-hoc reports from IP management system for IP counsel R&D and business stakeholders.
2. Japan Patent Office (JPO) Procedures:
Prepare and manage the administrative process for filing new patent utility model design and trademark applications with the JPO.
Coordinate the payment of official fees including filing fees examination requests and annual patent annuities ensuring all payments are made on time.
Handle the administrative processing of Office Actions decisions to grant and other official communications from the JPO docketing response deadlines and forwarding them to the appropriate counsel.
Manage the formalities for patent registration recordation of assignments and other post-grant procedures.
3. Law Firm & Vendor Coordination:
Serve as the primary administrative point of contact for external Japanese IP law firms and foreign associates.
Prepare and send clear and concise instructions to outside counsel for filings prosecution responses and other IP-related actions.
Review correspondence legal documents and filings from law firms for accuracy and completeness.
Process review and track invoices from external counsel and other IP service vendors.
4. Administrative & Team Support:
Provide high-level administrative and process support to in-house IP counsel.
Organize and maintain comprehensive electronic files for all IP matters.
Assist in preparing materials for patent review committee meetings and managing invention disclosure submissions.
Handle the formalization of documents including obtaining signatures notarization and legalization as required for foreign and domestic filings.
Qualifications :
- Experience: Minimum of 3-5 years of direct experience as an IP paralegal or IP administrator in either a corporate in-house legal department or an IP law firm.
- JPO Knowledge: Deep practical understanding of the Japan Patent Office (JPO) patent and trademark prosecution lifecycle from filing to grant and maintenance.
- Software Proficiency: Proficiency and significant hands-on experience with IP management software is essential. Experience in data migration and data management.
- Language Skills: Native-level fluency in Japanese (written and spoken) and business-level proficiency in English (written and spoken) for effective communication with global teams and foreign associates.
Remote Work :
No
Employment Type :
Full-time
Employment Type
Full-time
