Legal Staff Technical Specialist (Patent Agent) in New York City, NY

Law Firm

New York City, NY

Legal Staff Technical Specialist (Patent Agent) in New York City, NY

Legal Staff

Min 3 yrs required

No

Job Title: Patent Agent (Biomedical Device)

Job Responsibilities:

- Prepare draft patent applications and incorporate scientific aspects of inventions.
- Prepare draft responses to communications from . and foreign patent offices regarding factual and scientific matters.
- 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 inventors and the Patent & Trademark Office regarding all aspects of the patent application process.
- Communicate via face-to-face meetings, email, and telephone with staff, clients, and PTO personnel.
- Interact professionally with clients, lawyers, and employees at all levels, ensuring ordinary courtesy and tact while maintaining confidentiality.
- Organize and prioritize numerous tasks to complete them under time constraints efficiently and cost-effectively.
- Stay informed about technology trends and make recommendations regarding technology needs.
- Undertake continuing education and remain updated on current patent prosecution issues and trends to maintain appropriate accreditation.
- Enter, maintain, and analyze data for lawyer and staff reports, including running and distributing reports as needed.

Education and Experience Information:

- Bachelor’s degree in biomedical engineering, mechanical engineering, physics, material science, or related medical device technology preferred with relevant research experience; or Master’s or . in a related field.
- Qualified to sit for the patent bar; preferably already licensed to practice before the USPTO.
- Solid experience in patent prosecution, with additional experience in patent portfolio analysis, due diligence, or other IP transactional matters preferred.
- Experience in PTAB proceedings is a plus but not required.
- Must have an excellent academic record.

Required Skills and Abilities:

- Ability to analyze, interpret, and draw inferences from research findings and prepare reports.
- Strong investigative and problem resolution skills.
- Knowledge of principles, procedures, and standards for drafting complex patent documentation in the area of expertise.
- Awareness of current and emerging developments and trends within the area of expertise.
- Advanced working knowledge of research principles, methods, techniques, and resources.
- Strong interpersonal skills and ability to work effectively with a wide range of individuals.
- Ability to organize and prioritize numerous tasks and complete them under time constraints.
- Advanced oral and written communication skills, with the ability to communicate complex factual and technical information effectively.
- Knowledge and use of time management software, Outlook, Word, and Excel programs.
- Familiarity with prosecution docketing systems.
- Ability to understand and comply with confidentiality issues and ethical responsibilities.
- Flexibility to work additional hours when necessary to meet deadlines or manage peaks in workload.
- The role may be hybrid, requiring a minimum of three days per week (or at least 60%) present in the office, with up to two days per week (40%) possibly performed remotely.

Salary Information:

- For positions based in the CA or NYC office of the law firm, the salary range is $120,000 to $200,000, depending on the experience level.

Application Information:

- Date Posted: Sep 05, 2019
- Application Deadline: Jan 24, 2031

Jul 07, 2025
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