Patent Agent

2-5 yrs required

Full-time

No

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.

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