Patent Agent

1-3 yrs required

Full-time

No

A law firm in San Diego, CA, is seeking a Patent Agent to play a pivotal role in patent prosecution and IP matters. The agent will review invention disclosures, conduct patentability analyses, draft patent applications, manage US and foreign dockets, and provide support for due diligence and freedom to operate analyses. The ideal candidate should have at least 1 year of patent prosecution experience in specific technologies and be USPTO-admitted.

Duties:

• Review invention disclosure documents and conduct invention disclosure meetings with inventors.
• Conduct prior art searches, review references, and analyze patentability.
• Draft and prepare patent applications in accordance with USPTO standards.
• Review USPTO office actions, formulate response strategies, conduct examiner interviews, and draft and file responses.
• Manage US and foreign patent dockets, ensuring timely filings and maintenance.
• Analyze patents and conduct IP due diligence and freedom to operate analyses.
• Collaborate with patent attorneys and clients to provide strategic IP counsel.

Requirements:

• At least 1 year of patent prosecution experience in specific technologies, including hardware and devices, software, database technology, artificial intelligence, wireless, and image/signal processing.
• USPTO admission is required.
• Prior work experience in a law firm is strongly preferred.
• Excellent written and verbal communication skills.
• A technology background in computer science, computer engineering, and/or electrical engineering is highly desirable.

Education:

• Bachelor's or higher degree in a relevant technology field, such as computer science, computer engineering, or electrical engineering.

Certifications:

• Admission to the United States Patent and Trademark Office (USPTO).

Skills:

• Proficiency in patent prosecution, patent analysis, and docket management.
• Strong analytical skills for prior art searches and patentability assessments.
• Effective written and verbal communication abilities.
• Collaboration and teamwork skills for working with attorneys and inventors.
• Detail oriented and organized approach to patent prosecution and docket management.

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