A law firm in Millersville, MD, is seeking an experienced and highly motivated Patent Agent to join their team. The ideal candidate will be a USPTO registered patent agent with a proven track record in patent prosecution. While previous experience with USPTO patent prosecution is required, some litigation experience is preferred. The firm is open to candidates from all technical disciplines. The role involves handling patent applications, providing technical and legal advice on intellectual property matters, and supporting clients through the patent process.
Duties and Responsibilities:
- Prepare and prosecute patent applications before the United States Patent and Trademark Office (USPTO), ensuring adherence to all relevant regulations.
- Draft detailed patent applications, including specifications, claims, and technical drawings.
- Conduct patentability searches and analysis to assess the potential for patent protection and advise clients accordingly.
- Manage communications with the USPTO, including responding to office actions, rejections, and requests for additional information.
- Provide clients with strategic advice on patent portfolio management, including developing and refining patent strategies.
- Collaborate with inventors, engineers, and other technical professionals to accurately represent inventions and technical details in patent applications.
- Assist in patent-related litigation matters, including discovery, evidence preparation, and expert report development.
- Stay current with developments in patent law, industry trends, and technological advancements to offer informed legal guidance.
- Maintain accurate records of patent filings, correspondence, and case status.
Requirements:
- USPTO registration as a patent agent.
- Previous experience with USPTO patent prosecution is required.
- Some experience in patent litigation is preferred but not mandatory.
- Open to all technical disciplines, including engineering, computer science, chemistry, biology, and others.
- Strong understanding of patent laws and regulations.
- Excellent written and verbal communication skills.
Education:
- Bachelor’s degree in a technical discipline (., Engineering, Computer Science, Chemistry, Biology) from an accredited institution.
Certifications:
- Registration with the United States Patent and Trademark Office (USPTO).
Skills:
- Proficiency in preparing and prosecuting patent applications.
- Strong technical background and ability to understand complex technical details.
- Ability to conduct patentability searches and analyze prior art.
- Familiarity with patent litigation processes and support.
- Excellent drafting, legal research, and writing skills.
- Effective communication skills for interacting with clients and technical professionals.
- Strong organizational skills with attention to detail.