Description:

About the Intellectual Property – Patent Prosecution Section
Our patent practice offers comprehensive strategic counseling in patent law and practice that enables our clients to clarify goals, find solutions, and achieve results throughout the innovation lifecycle. Our patent attorneys and agents advise clients on obtaining and enforcing patent protection, licensing or acquiring patent rights, executing financing and other business transactions, and navigating the patent landscape in their various industries.

Responsibilities:
A General Practice, Full Service Law Firm Employing Approximately 450 Attorneys Worldwide is seeking a patent agent with an advanced degree in medicinal or organic chemistry to join our IP Prosecution team. Patent agents work under the supervision and guidance of partners in our IP section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, freedom to operate analysis, and due diligence work. San Francisco is the preferred office location.

Assess scientific literature, patents, and patent application documents, each encompassing a variety of chemical subjects, including organic, synthetic, and medicinal chemistry, as well as material science
Understand, critique and provide insightful opinion on scientific data relating to inventions
Conduct a comprehensive search for scientific articles, patents, and patent application documents relevant to the subject of an invention
Perform in-depth analysis comparing an invention with existing discoveries or inventions. Identify essential elements, features, or components of an invention
Compose patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention, and a set of claims clearly and distinctly defining the invention
Draft responses to rejection of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, providing detailed analysis of the scientific or patent references cited in the rejection, assessing the difference between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent
Present ideas, reasoning, and conclusions in a concise way to colleagues. Provide insightful feedback and arguments to colleagues on their ideas
Work with clients on innovative and cutting-edge technologies to procure patent protection and build IP portfolios

Collaboration with team members is an important component of any role at A General Practice, Full Service Law Firm Employing Approximately 450 Attorneys Worldwide. Therefore, the firm encourages working from the office approximately 60% of the time in accordance with the firm's published guidelines.

Qualifications:

USPTO admission required
Ph.D. degree in Organic or Medicinal Chemistry, or minimum of 3-years of post-baccalaureate laboratory research experience
Two years or more of patent prosecution experience
Ability to present scientific concepts, analysis, reasoning and conclusions to scientists and non-scientists
Ability to prioritize competing responsibilities, stay organized and exercise attention to detail
Ability to collaborate and work effectively in team settings