Patent Agent Job Description

'Patent agents help clients secure patents, which are ownership interests in scientific inventions like software, engines, equipment and medicines.The way patents are secured is by preparing, filing and prosecuting applications involving new inventions with the United States Patent & Trademark Office (the "USPTO").

Patent agents must pass a special bar exam given by the USPTO and be members of the Patent Bar.Patent agents are not necessarily attorneys and patent agents who are not attorneys cannot help clients with legal matters such as patent litigation.

Like patent attorneys, patent agents need to have specialized knowledge in the scientific or engineering area in which they work.Some patent agents are mechanical engineers.Others, who work on patent applications in the hard sciences area, are electrical engineers, computer scientists, computer engineers, physicists or astrophysicists.Still others, who work on patent applications in the life sciences area, are biologists, chemists, organic chemists, geneticists, neuroscientists, medical doctors or chemical engineers.

Here are a few sample patent agent job descriptions:

Patent Agent

The candidate will work closely with the company's Patent Counsel. Will evaluate the patentability of innovations. Prepare, draft and file patent applications. Work closely with attorneys and different business teams. Perform research and analysis, and provide guidance on a variety of patent and IP-related issues. Act as liaison for interdepartmental initiatives. Interact with outside counsel on a regular basis.  

The candidate should have a Bachelor's degree in a science discipline. A Master's degree a plus. Should be registered to practice as a Patent Agent with the USPTO. Must have 4+ years of patent experience in a law firm or technology company handling EE/CS patent prosecution. Strong technological background and familiarity with both hardware and software essential.  

Patent Agent

The candidate must be registered to practice before the USPTO. Prior experience in patent preparation and prosecution in a law firm environment is desired. The ideal candidate should have a degree in Electrical Engineering, Computer Science, Physics, or related discipline. Candidate with Aerospace and Nuclear Engineering degrees will also be considered. Must possess excellent academic credentials and strong communication, interpersonal, and organizational skills.  

Patent Agent

Seeking a Patent Agent, ideally with a degree in electrical engineering and 3 years of experience drafting and prosecuting patent applications, and preparing patentability, infringement and validity opinions. USPTO registration required.

Biotechnology/Chemistry Patent Agent

The candidate should have a background in biotechnology/chemistry. A Ph.D. (molecular/cell biology, biochemistry, medical science, immunology, chemistry, etc.) and 2-3 years of previous patent prosecution experience are required. Must have a J.D. degree from an ABA-approved law school and be an active member in good standing of the Bar.   

Intellectual Property Associate/Patent Agent (Chemistry)

The candidate will join the busy life science focused patent counseling, prosecution, and litigation practice. Assist patent attorneys on patent prosecution, counseling, and litigation; draft patent applications and responses to office actions; and advise lawyers on technology issues in preparation for depositions. Should have 2-5 years of substantive industry experience and a Ph.D. degree in chemistry or a related field, including to conduct prior art database searches for patentability and freedom to operate analyses; analyze patent and scientific papers and documents to a Must have a J.D. degree from an ABA-approved law school and be an active member in good standing of the Bar. 

Patent Agent (Biotech)/Intellectual Property Associate

The candidate will conduct prior art database searches for patentability and freedom to operate analyses; analyze patent and scientific papers and documents to assist patent attorneys on patent prosecution, counseling, and litigation; draft patent applications and responses to office actions; and advise lawyers on technology issues in preparation for depositions.

The candidate must have a J.D. degree from an ABA-approved law school and be an active member in good standing of the Bar. Should have 2-5 years of substantive industry experience and a Ph.D. degree in biotechnology or a related field to focus on patent counseling, prosecution, and litigation practice.  

Patent Agent (Chemistry)

The candidate's duties include: conduct prior art database searches for patentability and freedom to operate analyses; analyze patent and scientific papers and documents to assist patent attorneys on patent prosecution, counseling, and litigation; draft patent applications and responses to office actions; and advise lawyers on technology issues in preparation for depositions. Should have 2-5 years of substantive industry experience and a Ph.D in chemistry or a related field to focus on patent counseling, prosecution, and litigation practice. Broad scientific knowledge in chemistry required. Must be eligible to sit for the USPTO registration exam and otherwise meet the requirements for registration as a patent agent. Must have a J.D. degree from an ABA-approved law school and be an active member in good standing of the Bar.   

Patent Agent (Biotech)

The candidate's duties include: conduct prior art database searches for patentability and freedom to operate analyses; analyze patent and scientific papers and documents to assist patent attorneys on patent prosecution, counseling, and litigation; draft patent applications and responses to office actions; and advise lawyers on technology issues in preparation for depositions. Should have 2-5 years of substantive industry experience and a Ph.D in biotechnology or a related field to focus on patent counseling, prosecution, and litigation practice. Broad scientific knowledge in biotechnology required. Must be eligible to sit for the USPTO registration exam. Must have a J.D. degree from an ABA-approved law school and be an active member in good standing of the Bar.'

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