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ProfileNew York City office of an AmLaw firm seeks life sciences technical advisor/scientific advisor/patent agent with 1-4 years of patent prosecution experience. The candidate will be responsible for performing highly complex and sensitive client work requiring a high level of professional capability and skill. Will be preparing draft patent applications, drafting responses to communications from the USPTO, assisting in diligence matters (clearance studies and opinion work), and supporting technical aspects of litigation where needed. Assists attorneys in the delivery of quality legal services to clients in an efficient and cost-effective manner. Prepare draft responses to communications from U.S. and foreign patent offices with regard to factual and other scientific matters. Undertake continuing education and remain abreast of current patent prosecution issues and trends, as required to maintain appropriate accreditation in the field. 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 liaison between, inventors and Patent and Trademark Office in connection with all aspects of 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. Must have a Bachelor?s degree in chemistry, organic chemistry, medicinal chemistry, biochemistry, chemical engineering with relevant research expertise; or a Master?s degree or a PhD in a similar chemistry-based field. Must be qualified to sit for the Patent Bar, and preferably already be licensed to practice before the United States Patent and Trademark Office. Knowledge of principles, procedures, and standards for drafting a range of complex patent documentation in area of expertise is essential. Knowledge of current and emerging developments and trends within area of expertise is needed. Advanced working knowledge of research principles, methods, techniques, and resources is essential. Knowledge of and use of time management software is needed. Knowledge of Outlook, Word, and Excel programs is essential. Familiarity with prosecution docketing systems is needed.
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