Patent Agent

Full-time 19 views
Company BCG Attorney Search Location Salt Lake City, UT, United States



Max 10 yrs required



Aug 02, 2022

Sep 01, 2022


Salt Lake City office of a BCG Attorney Search Top Ranked Law Firm seeks patent agent with experience. The candidate provides legal support to the patent prosecution attorneys in the Technology and Intellectual Property practice group. Reports to the TIP Practice Group Leader. Works with TIP lawyers and other professionals as part of the client service teams. Assist patent attorneys with preparing patent applications, including: reviewing invention disclosure materials to develop claiming strategies for patent applications; drafting claims from invention disclosure; preparing drawings for patent applications; drafting specification of application in accordance with claims and drawings; timely delivering refined, completed patent application to assigning attorney according to instructed deadline and accounting for attorney and/or client review; and revising draft applications according to client and/or attorney comments. Assist patent attorneys with prosecuting patent applications, including: devising strategies for responding to office actions; drafting office action responses; timely delivering refined, completed office action response to assigning attorney according to deadline and accounting for attorney and/or client review; filing patent applications and office action responses with the USPTO; and conducting USPTO examiner interviews. Preparing written communications (letters/emails) with attorneys, patent examiners, foreign associates, and firm clients regarding foregoing functions. Patent analysis to identify and bring perspective on patent related issues in projects involving client counseling and advising, including due diligence and opinion projects. Must be registered to practice (have a registration number) before the United States Patent and Trademark Office (USPTO). Must have requisite technical background (education) to have passed the USPTO Patent Bar exam to be a registered agent with the USPTO. Specific technical background will depend on the clients and types of work available, though generally will be in one of the life sciences, electrical engineering, computer science, computer engineering, mechanical engineering, and physics. Should have Bachelor?s degree. Should have Advanced degree in engineering or the biological sciences (a Ph.D/M.S./M.D., or equivalent is preferred), with strong expertise in electrical or mechanical engineering, cellular and molecular biology, immunology, biochemistry, pharmacology, or a related field. Patent writing experience is desirable.

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