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;

To Liaise 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;

To Review 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;

To conduct 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.

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 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