Legal Staff Technical Specialist (Patent Agent) in Boston, MA

Law Firm

Boston, MA

Legal Staff Technical Specialist (Patent Agent) in Boston, MA

Legal Staff

Min 2 yrs required

No

Job Title:
Patent Agent - Technology

Job Responsibilities:
- Perform patent searching and investigate inventorship issues.
- Manage the intake of invention disclosures and review disclosures for patentability, novelty, and non-obviousness.
- Evaluate qualification and applicability of prior art.
- Study and analyze scientific or technical documents, including previously published patent documents, to assess patentability, novelty, and inventiveness.
- Draft new patent applications; act as a second reviewer for filings; manage the processing of e-File filings.
- Convert prior provisional applications into utility applications, foreign filed applications into . applications, and . applications into foreign applications.
- Prepare replies to . and foreign office actions.
- Assist attorneys with prosecution; identify alternative prosecution scenarios and claim strategies to develop patent portfolios.
- Conduct interviews with USPTO examiners; prepare appeals to PTAB and clearance analyses.
- Prepare reexamination petitions, reissue applications, and IPR and CBM petitions.
- Prepare substantive client correspondence.
- Meet with clients to discuss inventions and ascertain whether the inventions are likely to lead to commercially meaningful patent claims.
- Provide patent prosecution training.

Education & Experience:
- Bachelor’s degree (or graduate degree) in Biomedical or Chemical Engineering required.
- Minimum 2 years of experience prosecuting or examining patent applications.
- Registered to practice before the . Patent and Trademark Office.
- Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills.

Salary Information:
For positions in Chicago, Illinois, the salary range for this position is: $109, - $174,.

Additional Information:
The position is part of the Intellectual Property Practice Group at the law firm and offers a hybrid in-office/remote working schedule. The law firm provides a law school tuition reimbursement program to eligible employees pursuing a Juris Doctorate degree. The law firm is committed to equal employment opportunity and reasonable accommodations for applicants with physical and/or mental disabilities. Diversity is valued, and applications from all qualified individuals are encouraged, regardless of race, color, gender, age, religion, national origin, sexual orientation, disability, veteran status, or any other characteristic protected by law. The employment relationship is at-will, meaning terms and conditions of employment can be modified by the firm at any time.