Patent Prosecution Agent

2-10 yrs required

Full-time

No

New York City office of a BCG Attorney Search Top Ranked Law Firm seeks a patent prosecution agent with 3+ years of patent prosecution experience in Mechanical Engineering, Electrical Engineering, Computer Science, or a related field. The candidate will work under the supervision and guidance of partners in the Intellectual Property section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, freedom to operate analysis, and due diligence work. Specific duties include the following: Assess scientific literature, patents, and patent application documents, each encompassing a variety of Mechanical Engineering, Electrical Engineering, Computer Science, and related fields. Understand, critique, and provide insightful opinions on scientific data relating to inventions. Conduct comprehensive searches for scientific articles, patents, and patent application documents relevant to the subject of an invention. Perform in-depth analysis comparing an invention with existing discoveries or inventions. Identify essential elements, features, or components of an invention. Draft patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention, and a set of claims clearly and distinctly defining the invention. Draft responses to rejections of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, provide detailed analysis of the scientific or patent references cited in the rejections, assess differences between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent. Conduct freedom-to-operate studies, including analyzing non-infringement and invalidity of competitors? patents. Collaborate with colleagues on various projects. Adapt effectively in different team environments. Present ideas, reasoning, and conclusions in a concise way to colleagues. Provide insightful feedback and arguments to colleagues on their ideas. Work with clients on innovative and cutting-edge technologies to procure patent protection and build IP portfolios. Collaboration with team members is an important component of any role at the firm. Should have a degree in Mechanical Engineering, Electrical Engineering, Computer Science, or a related field. Admission to the USPTO is required. Law firm experience preferred.

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