Patent Attorney Job Description

United States

'Patent attorney jobs involve all manner of legal work relating to patents, which are ownership interests in scientific inventions like computer programs, devices and medicines. Patent attorneys handle patent prosecutions before the United States Patent & Trademark Office. Some patent attorneys also litigate cases in federal court and in other tribunals involving patent rights and patent infringement.

Patent attorneys are members of one or more state bars. They also are admitted to the Patent Bar. Moreover, because they must deal with complex scientific issues, patent attorneys are scientists with graduate degrees in the scientific or engineering areas in which they work. Some patent attorneys work in the "hard sciences" areas, and have degrees in electrical engineering, computer science, computer engineering, physics or astrophysics. Other patent attorneys work in the "life sciences" area, and have degrees in biology, biochemistry, chemistry, organic chemistry, genetics, neuroscience, medicine or chemical engineering. Patent attorneys also might be mechanical engineers.

Here are a few sample patent attorney job descriptions:

Patent Attorney:

Duties: Will be a member of the legal team in the Office of Counsel, and will work closely with other Office of Counsel Staff and other business functions in the organization to provide legal advice to management and staff on all aspects of intellectual property, including inventions, patents, copyrights, licensing, IP-related government contract issues, and other business issues integral to the organization's operations. Reporting to a Deputy General Counsel, duties will include proactively providing legal advice related to invention evaluation, domestic and foreign patent application preparation and prosecution, management of outside counsel, license review, drafting, and negotiation, IP-related government contract review and negotiation, copyright review and transfers, nondisclosure agreement review and negotiation, representing the organization before the U.S. Patent and Trademark Office and foreign patent offices, interpretation of laws and regulations, problem resolution, representing the organization to outside entities, delivering critical communications and training, and developing policies and procedures.  

Requirements: A J.D. degree from an ABA accredited law school, admission to practice in one or more jurisdictions and registration to practice before the U.S. Patent and Trademark Office. 2-5 years of experience as an engineer. 5+ years of legal experience preparing and prosecuting domestic and international patent applications, preferably in electrical/physics-related and/or computer/software-related arts, and providing patent ability, validity, and infringement assessments, with a law firm, federal agency, or corporation.

Senior Patent Attorney

The candidate should have passed a State Bar and the USPTO Patent Bar. Must have 10+ years of law practice with substantial patent preparation and prosecution of US matters. A Bachelor's or Master's degree in Electrical Engineering, or Computer Engineering is preferred. Telecommunications and/or actual engineering experience is a plus. A book of business is also a plus.

Junior Patent Attorney

The candidate will work closely with the lead IP attorney in building the company's patent portfolio. Responsibilities: 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 be registered as a Patent Attorney with the USPTO. Must have Bachelor's degree in a science discipline; Masters is a plus. Should have 2-3+ years of patent prosecution experience in a law firm or technology company handling EE/CS patent prosecution. Should have strong technological background and familiarity with both hardware and software. Must have superior analytic ability and project management skills. '

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