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Patent Attorney In-House Job Description

In-house patent attorneys are patent attorneys who work in the legal departments of companies as opposed to in law firms.Given the scientific nature of patents, most of these companies are science, engineering or technology companies that are producing new inventions and products.In-house patent attorneys have just one client (their company) as opposed to many clients, but they share all other aspects of patent attorneys who work in law firms.

Patent attorneys are members of the bars of one or more state, as well as members of the United States Patent &Trademark Office (the “USPTO”) Patent Bar.In addition to being attorneys, patent attorneys are scientists with high-level graduate degrees.If they work for a company that develops products in the hard sciences areas (like a computer software or aerospace company), the in-house patent attorney will have a degree in something like electrical engineering, computer science, computer engineering, physics or astrophysics.If he or she works for a company that makes products in the life sciences area (like a biotech or pharmaceutical company), he or she will have a degree in something like biology, biochemistry, chemistry, organic chemistry, genetics, neuroscience, medicine or chemical engineering.

In-house patent attorneys can handle all legal matters relating to patents, including patent litigation or patent prosecutions with the USPTO.



Here are a few sample patent attorney in-house job descriptions:

Senior In-House Patent Attorney

The candidate should be an experienced patent attorney with a background in electrical engineering, computer engineering, or computer science. Manage outside counsel, managing the corporation's prosecution docket, performing due diligence and freedom to operate analyses, and advising management how to proceed.

Mid-level Patent Attorney / In-house IP Counsel

The candidate will draft and prosecute patent applications and mature into client counseling and offer litigation support. Should have 3+ years of experience. Must have a Chemical engineering degree or a chemistry degree, preference for advanced degrees.

Patent Attorney

Duties: To provide immediate assistance with drafting patent applications and responding to domestic and foreign Office Actions for software and computer-related inventions.  

Requirements : The candidates should demonstrate strong backgrounds in computer science, computer engineering, or electrical engineering. The candidates with at least a few years of experience in patent prosecution.

Part-time Patent Attorney

The candidate will provide immediate assistance with drafting patent applications and responding to domestic and foreign Office Actions for software and computer-related inventions.

Chief Patent Counsel/Electrical Patent Attorney

The candidate must have 10+ years of patent litigation and licensing experience and an Electrical, Computer or Physics background. Should have prior in-house experience. Develop and implement corporate strategy, negotiate licenses and manage patent enforcement, litigation and outside counsel.

Electrical Patent Attorney

The candidate will be responsible for preparing claim charts for patent acquisitions, patent litigation and licensing. After a training period of a few years, manage patent assertions and patent litigations. Understudy over the next few years to become a First Chair Licensing Attorney. Must have 10+ years of experience in a law firm who wants to transition in-house. Should have a PhD or MS degree in Electrical Engineering or Computer Engineering and experience with telecom and wireless technologies as an engineer or a patent attorney. Some international travel is needed.

Computer Patent Attorney

The candidate will be responsible for preparing claim charts for patent acquisitions, patent litigation and licensing. After a training period of a few years, manage patent assertions and patent litigations. Understudy over the next few years to become a First Chair Licensing Attorney. Must have 10+ years of experience in a law firm who wants to transition in-house. Should have a PhD or MS in Electrical Engineering or Computer Engineering and experience with telecom and wireless technologies as an engineer or a patent attorney. Some international travel is needed.

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