Description:
The Patent Agent II assists with every aspect of patent research, patent application preparation and submission, and patent prosecution activities, leveraging a strong scientific background. This position is responsible for submitting patent applications and reviewing and responding to communications from the U.S. Patent and Trademark Office (USPTO) and foreign patent offices. The Patent Agent II provides direct client support throughout the patent process and manages patent portfolios with minimal attorney oversight. This position may guide more junior patent professionals or other IP personnel and may also provide support in patent litigation matters and business transactions. A hybrid work schedule is available for this position.A career at A Global 100 Law Firm, With More Than 700 Attorneys is the opportunity to do work that matters. It's the chance to use your knowledge to shape what's ahead. To share, to innovate, to learn at a firm that taps the power of collective thinking.
We've created a dynamic, energizing environment that promotes success for our clients and each other. We offer fast growth, connectedness, and training in business as well as law. And our rigorous standards assure you are part of a diverse team of top talent at every turn.
If you're someone who's looking toward the future, we'd love to hear from you.
Location: Boston, MA; Chicago, IL; Los Angeles, CA; San Francisco, CA; Washington, DC
- Draft, prepare, and submit patent applications to the USPTO with limited attorney supervision.
- Review and respond to communications from the USPTO and foreign patent offices received in pending patent applications with moderate attorney review.
- Engage in more independent client interaction.
- Provide guidance and training to IP support professionals on procedures and requirements.
- Provide substantive support for patent enforcement, licensing and business transactions.
- Provide substantive support with the preparation of patentability, validity, freedom to operate and infringement opinions with attorney review and completion.
- Assist attorneys with more complex research and analysis, conducting literature and patent searching on internet databases.
- Perform other duties as assigned.
Job Requirements:
- 4-7 years of patent agent experience.
- Passed Patent Bar Exam and registered to practice before the U.S. Patent and Trademark Office
- Advanced scientific degree (M.S., Ph.D.); or Bachelor's Degree in technical discipline with relevant experience.
- Uses clear, concise, and accurate communication, tailored for intended audience.
- Strategically interpret client needs and take appropriate action.
- Advanced ability to identify and provide appropriate information to others.
- Effectively develop relationships with clients and maintain working relationships with others.
- Plan and prioritize workload to deliver exceptional legal service to clients.
- May mentor junior patent agents and patent technical specialists.
- Ability to manage deadlines, monitor prosecution docket, and comply with practice group procedures.
- Sound scientific and technical knowledge.
- Ability to identify and handle issues arising in a matter.
- In-depth understanding of the requirements for patentability.
- In-depth understanding of leading cases affecting patent law and how to apply them.
- Familiarity with patent litigation.
- Detailed understanding of patentability and procedures.
- In-depth knowledge of all stages of patent lifecycle.
- Assist attorneys in applying established procedures and case law appropriately.
- Ability to conduct and evaluate complex patent and literature searches effectively.
- Ability to draft complex patent applications with minimal attorney oversight.
- Ability to draft responses to official actions with minimal attorney oversight.
- Ability to develop and manage patent portfolios with minimal attorney oversight.
- Ability to effectively interact with clients throughout the patent process.