IP Patent Agent

2-8 yrs required

Full-time

No

New York City office of a BCG Attorney Search Top Ranked Law Firm seeks IP patent agent with 3+ years of experience. The candidate will prepare draft patent applications to incorporate scientific aspects of inventions. Will prepare draft responses to communications from . and foreign patent offices with regard to factual and other scientific matters. Evaluate and report on the technological aspects of inventions and other scientific matters. Investigate general and specific technologies as needed. Discuss scientific aspects of inventions with clients and inventors. Identify and analyze complex patent issues and problems and implement solutions. Communicate with and act as a liaison between inventors and the Patent & Trademark Office in connection with all aspects of the patent application process. Communicate face-to-face, e-mail, and telephone with staff, clients, and PTO personnel. Interact professionally with clients, lawyers, and employees at all levels and provide information with ordinary courtesy and tact while safeguarding confidentiality. Organize and prioritize numerous tasks and complete them under time constraints in an efficient and cost-effective manner. Stay abreast of technology trends and make recommendations regarding technology needs. Undertake continuing education and remain abreast of current patent prosecution issues and trends, as required, to maintain appropriate accreditation in the field. Enter, maintain, and analyze data that the Firm uses specifically for lawyer and staff reports, including running and distributing the reports as needed. Bachelor?s degree in biomedical engineering, mechanical engineering, physics, material science, or related medical device technology preferred with relevant research experience; or Master?s or PhD in a related field. Qualified to sit for the Patent Bar; preferably already licensed to practice before USPTO is required. Should have knowledge of principles, procedures, and standards for drafting a range of complex patent documentation in an area of expertise. Knowledge of current and emerging developments and trends within the area of expertise. Advanced working knowledge of research principles, methods, techniques, and resources is required. Knowledge of and use of time management software is required. Knowledge of Outlook, Word, and Excel programs is needed. Familiarity with prosecution docketing systems is essential. Should have solid experience in patent prosecution, as well as some experience in patent portfolio analysis, due diligence, or other IP transactional matters; experience in PTAB proceedings would be a plus.

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