Patent Filing & Prosecution Lead

The Filing Prosecution Administration team is providing support to Nokias Patenting organization in building and managing the global patent portfolio. The team is responsible for filing patent applications with Patent Offices, handling incoming and outgoing patent application prosecution correspondence from/to Patent Offices, docketing and maintaining data in Intellectual Property Rights Management System tools, interfacing with external associates globally, ensuring data quality and accuracy, tracking deadlines, managing other administrative requirements, and working closely with internal patent practitioners. As the position is entirely new, you will have the opportunity to shape the role and build the new in-house IndianFiling Prosecution administration team.

• Coordinate and lead the local IN filing and prosecution team performing all the following tasks.
• Define with local attorney and managers of filing and prosecution administration teams the required processes to be followed by the team and ensure adherence to the processes by the team.
• Support and collaborate with practitioners in the filing and prosecution of IN National, provisional or PCT patent applications (first filings or further filings / National phases of PCT applications).
• Request Foreign Filing licenses / permits at IN patent office for inventions with Indian inventors to be first filed in foreign jurisdictions.
• Manage all required formalities such as Power of Attorneys.
  
• Prepare and process patent application related documents and forms as well as various official correspondences, for example responses to office actions or working statements to be filed with IN patent office.
• File patent applications via electronic filing systems.
• Manage the payment system to pay the required fees at the IN patent office.
• Create and maintain accurate records and docketing in Nokia patent database.
• Support the local inventorscommunity for administrative tasks, such as collecting wet signatures from inventors (for assignments, required forms etc.) and sending documents to archives in Finland or local agents in different countries.
• Proactively manages patent prosecution docket, ensuring all deadlines are met in a timely manner.

Must-Have:

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  Bachelors degree (legal or management) -with paralegal certificate.
• At least 5 yearsexperience in filing prosecuting at IN patent office (from private practice or in-house team).
• Prior experience of managing team or organizing teamwork.
• Excellent communication skills in English, both spoken and written.
• In-depth knowledge of IN patent prosecution rules and procedures.
• Exceptional attention to detail and deadlines.
• Excellent organizational and prioritization skills, time management skills, and interpersonal skills.

Nice-To-Have:

• Experience in working in multicultural and multiple time zones environment.