Patent Agent or Patent Technical Specialist

Profile

A law firm in Irvine, CA, is seeking a Patent Agent or Patent Technical Specialist to support patent prosecution and patent litigation matters. The role involves working closely with lawyers to analyze invention disclosures, draft patent applications, manage patent portfolios, and stay current on intellectual property law developments. The ideal candidate will have 1-3 years of experience as a technical specialist or patent agent, a strong background in biology or biomedical sciences, and admission to practice before the USPTO.

Key Responsibilities:

• Patent Prosecution:

  • Analyze invention disclosures and perform patent searches to assess the patentability of inventions.
  • Draft, file, and prosecute patent applications before the United States Patent and Trademark Office (USPTO).
  • Prepare and file office action responses, information disclosure statements, declarations, and other patent-related documents.
  • Manage U.S. and foreign patent prosecution dockets, ensuring all deadlines are met.

• Patent Portfolio Management:

  • Manage patent portfolios, including tracking and maintaining dockets under the supervision of lawyers.
  • Direct client contact regarding due dates, invention disclosures, and other pertinent client projects/tasks.

• Patent Drafting:

  • Draft detailed descriptions of inventions using precise legal terminology for submission to patent offices worldwide.
  • Analyze technical and scientific documents, including previously published patents, to assess the strength of an invention or issued patent.

• Client Communication:

  • Engage in direct communication with clients regarding invention disclosures, patent prosecution deadlines, and other legal matters.
  • Coordinate with clients to gather necessary documentation and information for patent applications and responses.

• Patent Litigation Support:

  • Support lawyers in patent litigation, including performing due diligence and preparing supporting documents for legal activities.
  • Conduct interviews with examiners at the USPTO to advocate for clients' patent applications.

• Legal Research & Trends:

  • Stay current with legal developments in intellectual property law, including changes in patent prosecution rules and best practices.
  • Participate in continuing education to maintain appropriate accreditation and stay abreast of new trends and issues in the field.

• Data Management:

  • Enter, maintain, and analyze data used by the firm’s lawyers and staff for patent-related activities.

Job Requirements:

• Experience:

  • 1-3 years of experience as a patent agent or patent technical specialist.
  • Strong background in patent prosecution, including drafting and filing patent applications and managing patent portfolios.

• Skills:

  • Ability to analyze complex scientific and technical documents and draft precise, detailed patent applications.
  • Strong organizational and project management skills to handle multiple patent portfolios and meet deadlines.
  • Excellent communication skills, both written and verbal, for client-facing interactions and patent office filings.
  • Ability to provide clear, concise IP advice and legal interpretations to both technical and non-technical stakeholders.

• Bar Admission:

  • Admission to practice before the United States Patent and Trademark Office (USPTO) is required.

Education:

• Degree Requirements:
  • Bachelor’s degree in biology, biomedical sciences, or a related field.
  • Advanced degree (Ph.D.) in biology, biomedical sciences, or a similar background is strongly preferred.

Certifications:

• USPTO Admission: Required certification to practice before the USPTO.

Preferred Skills:

• Experience managing U.S. and foreign patent portfolios.
• Direct experience conducting interviews with USPTO examiners.
• Familiarity with the latest developments in intellectual property law and patent prosecution.

Benefits:

• Competitive salary and bonus opportunities.
• Health and wellness benefits, including medical, dental, and vision coverage.
• Retirement savings plans, including 401(k).
• Paid time off, holidays, and family leave benefits.
• Professional development opportunities, including continuing legal education (CLE) and patent-specific education.
• Hybrid and remote work opportunities available.

Company info

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