Senior Intellectual Property Attorney

Profile

A law firm in Philadelphia, PA, is seeking a Senior Intellectual Property Attorney with expertise in preparing complex patent applications, managing a large docket of domestic and foreign prosecution, consulting with clients and inventors, and conducting IP-related due diligence. The ideal candidate should have 6+ years of patent prosecution experience, practical knowledge of Chemistry, and an in-depth understanding of intellectual property laws. This role may require assisting the IP litigation team, legal research, and discovery activities. A minimum portable book of $200k is required, and the candidate can be considered for the associate, counsel, or partner level based on experience and business portfolio.

Duties:

• Prepare complex patent applications and continuations, divisionals, and reissue patent applications.
• Manage a substantial docket of domestic and foreign patent prosecution.
• Consult with clients, inventors, technical experts, and patent portfolio managers.
• Prepare responses to US office actions, conduct interviews with US Examiners, and prosecute a global patent portfolio across multiple jurisdictions.
• Prepare claim charts, analyze infringement and validity, and conduct IP-related due diligence.
• Maintain and share expertise on legal case law, rules, and regulations before the US Patent & Trademark Office and other jurisdictional IP offices.
• Assist the IP litigation team, including legal research and discovery support.

Requirements:

• 6+ years of patent prosecution experience, including preparation and prosecution of domestic and foreign patent applications, client counseling, opinion development, and due diligence activities.
• Practical experience and in-depth knowledge of Chemistry.
• Willingness to assist the IP litigation team as needed.
• A B.S. in Chemistry is required; A Master's or Ph.D. is preferred.
• 2+ years of research or industry experience in organic or inorganic chemistry.
• 6+ years of previous IP law experience, including foreign and domestic patent preparation and prosecution.
• Active USPTO registration.
• IP litigation support experience is preferred.
• Good standing in the Bar(s) where licensed to practice law.
• Superior academic record and strong attention to detail.
• A minimum portable book of $200k is required.

Company info

BCG Attorney Search
125 Park Avenue, 25th floor
New York
New York
United States 10017
Phone : (212) 232-0277
Fax : (213) 895-7306