Legal Staff Technical Specialist (Patent Agent) in Chicago, IL

Law Firm

Chicago, IL

Legal Staff Technical Specialist (Patent Agent) in Chicago, IL

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 and 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 a law firm and offers a hybrid in-office/remote working schedule. It is supervised by an intellectual property partner and involves daily contact with all partners in the practice group. The law firm provides a law school tuition reimbursement program for eligible employees. The firm is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. The employment relationship is on an "at-will" basis, allowing both the firm and the employee to end the relationship at any time with or without cause and with or without advance notice.