A law firm in New York City, NY, is seeking a Patent Agent with at least 3 years of experience. The Patent Agent will be responsible for preparing patent applications, responding to communications from patent offices, evaluating technological aspects of inventions, and serving as a liaison between inventors and the Patent and trademark Office.
Duties:
- Prepare draft patent applications and incorporate scientific aspects of inventions.
- Draft responses to communications from . and foreign patent offices regarding factual and scientific matters.
- Evaluate and report on technological aspects of inventions and conduct investigations into relevant technologies.
- Discuss scientific aspects of inventions with clients and inventors.
- Identify and analyze complex patent issues, implementing solutions as necessary.
- Act as a liaison between inventors and the Patent & Trademark Office throughout the patent application process.
- Communicate with staff, clients, and PTO personnel via face-to-face meetings, email, and telephone.
- Maintain professionalism, safeguard confidentiality, and interact courteously with clients, lawyers, and employees at all levels.
- Organize and prioritize tasks, meeting deadlines efficiently and cost-effectively.
- Stay current with technology trends and make technology recommendations.
- Undertake continuing education to maintain appropriate accreditation.
- Enter, maintain, and analyze data used for reports within the firm.
Requirements:
- A minimum of 3 years of experience as a patent agent.
- Bachelor's degree in biomedical engineering, mechanical engineering, physics, material science, or a related medical device technology field preferred, with relevant research experience; or Master's or . in a related field.
- Qualified to sit for the Patent Bar.
- Solid experience in patent prosecution, with some exposure to patent portfolio analysis, due diligence, or other IP transactional matters.
- Experience in PTAB (Patent Trial and Appeal Board) proceedings is a plus.
- Excellent academic record and registered to practice before the . Patent and Trademark Office.
Education:
- Bachelor's degree or higher in a relevant field.
Certifications:
- Qualified to sit for the Patent Bar.
Skills:
- Ability to analyze, interpret, and report on research findings.
- Knowledge of patent drafting procedures and standards.
- Familiarity with current and emerging developments in the field.
- Proficiency in research principles, methods, and techniques.
- Familiarity with time management and docketing software.
- Proficiency in Microsoft Outlook, Word, and Excel.
- Ability to work flexible hours, including evenings and weekends, when necessary to meet deadlines.
- Hybrid work arrangement, requiring a minimum of three days in the office and up to two days remote work.
