Description:

Kim Intellectual Property Law Group (Kim IP) is seeking an experienced Senior or Partner-Level Patent Attorney with a background in Mechanical Engineering, or a closely related engineering discipline to join our expanding intellectual property practice.

This is an opportunity for an accomplished patent attorney who is looking for more than a traditional patent prosecution role. The successful candidate will work directly with sophisticated clients, take responsibility for significant patent portfolios, help shape intellectual property strategy, and have the opportunity to develop and grow their own practice within an established IP platform.

We are particularly interested in attorneys with experience counseling clients in areas such as medical devices, mechanical systems, robotics, manufacturing technologies, consumer products, automotive technologies, electromechanical systems, and related technologies.

About Kim IP
Kim IP is a boutique intellectual property law firm dedicated to providing sophisticated, practical, and business-focused intellectual property counsel.

Our attorneys represent a diverse client base that includes Fortune 500 companies, universities and research institutions, medical device companies, established international businesses, emerging technology companies, and startups.

Our practice encompasses:

U.S. and international patent preparation and prosecution
Patent portfolio development, strategy, and management
Patentability and freedom-to-operate analyses
Validity and non-infringement opinions
IP due diligence and strategic counseling
Licensing and technology transactions
Trademark, copyright, and trade secret matters
Patent litigation and pre-litigation counseling
As a boutique firm, we offer attorneys the opportunity to perform sophisticated work while maintaining meaningful involvement with clients and the business issues underlying their intellectual property portfolios.

The Role:
The Senior / Partner-Level Mechanical Patent Attorney will assume a significant role in the firm's patent practice and will have substantial autonomy in managing client matters and relationships.

Depending on experience, responsibilities may include:

Managing and developing U.S. and international patent portfolios for established and emerging technology companies
Drafting and prosecuting sophisticated patent applications involving mechanical, electromechanical, medical device, and related technologies
Developing patent filing and prosecution strategies aligned with clients' technical and commercial objectives
Counseling clients regarding patentability, freedom to operate, infringement, validity, and competitive patent landscapes
Working directly with inventors, engineers, executives, entrepreneurs, technology-transfer professionals, and in-house counsel
Supervising and mentoring junior attorneys, patent agents, and other professionals
Reviewing patent applications, Office Action responses, and other work product prepared by members of the patent team
Coordinating international patent prosecution with foreign counsel
Assisting clients with IP due diligence, licensing, transactions, and strategic portfolio reviews
Supporting patent litigation and pre-litigation matters where appropriate
Developing and expanding existing client relationships
Participating in firm business development and strategic growth initiatives

For candidates with an existing client base, Kim IP provides a platform and infrastructure to support and expand that practice. A portable book of business is welcomed but is not required for consideration.

Qualifications:
Candidates should possess:

J.D. from an accredited law school
Registration to practice before the U.S. Patent and Trademark Office
A bachelor's or advanced degree in Mechanical Engineering or a closely related engineering discipline
Significant patent preparation and prosecution experience, preferably within a law firm or sophisticated corporate IP practice
Demonstrated ability to independently manage patent matters and communicate directly with clients
Strong understanding of U.S. patent prosecution practice and patent portfolio strategy
Exceptional legal writing, analytical, and communication skills
Strong technical aptitude and the ability to quickly understand complex technologies
Sound professional judgment and the ability to manage multiple sophisticated client matters
Admission to the New Jersey Bar, or eligibility and willingness to obtain admission where appropriate

Preferred Experience:
We are particularly interested in candidates with one or more of the following:

7+ years of substantive patent prosecution experience
Experience serving as a senior associate, counsel, partner, or equivalent in-house patent counsel
Experience with medical devices, surgical technologies, robotics, mechanical systems, manufacturing technologies, or electromechanical products
Experience managing substantial domestic and international patent portfolios
Experience preparing freedom-to-operate, validity, infringement, or patentability opinions
Prior engineering, product-development, or industry experience
Experience supervising and mentoring other patent professionals
Patent litigation or post-grant experience
Established client relationships or portable business
Demonstrated interest in business development and building a long-term practice