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Job Details

IP Transactions and Patent Prosecution Lawyer

Company name
BCG Attorney Search

Experience
1-5 yrs required

Location
Washington, DC, United States

Industry
Legal

Posted on
Nov 20, 2023

Valid Through
Dec 20, 2023

Profile

Job Overview: A law firm based in Washington, DC, is seeking a dynamic and experienced IP Transactions and Patent Prosecution Lawyer with 2-3 years of relevant experience. The ideal candidate will have a degree in Mechanical Engineering or Aerospace Engineering, along with strong prosecution experience and the ability to efficiently manage and coordinate patent families. Exceptional academic credentials, as well as excellent analytical, verbal, and written communication skills, are essential for this role. The candidate must also be registered to practice with the USPTO and should be an active member and in good standing of the District of Columbia Bar or eligible to waive in.

Duties:

  • Prepare and prosecute patent applications for a variety of clients in the Mechanical and Aerospace Engineering sectors.
  • Conduct prior art searches, analyze patentability, and provide strategic patent prosecution advice.
  • Manage and coordinate the prosecution of patent families, ensuring consistency and alignment with client goals.
  • Draft and negotiate IP-related agreements, including licensing, technology transfer, and IP transactions.
  • Provide legal advice on intellectual property matters, including patent infringement, validity, and freedom to operate.
  • Engage in client counseling, providing guidance on IP strategies and portfolio management.
  • Participate in due diligence activities related to IP assets in corporate transactions.

Requirements:

  • 2-3 years of experience as an IP Transactions and Patent Prosecution Lawyer.
  • Bachelor's degree in Mechanical Engineering or Aerospace Engineering.
  • Strong prosecution experience with a proven track record of patent drafting and prosecution.
  • Excellent academic credentials.
  • Registered to practice with the United States Patent and Trademark Office (USPTO).
  • Active member and in good standing of the District of Columbia Bar, or eligible to waive into the Bar.

Education:

  • Bachelor's degree in Mechanical Engineering or Aerospace Engineering.
  • Juris Doctor (JD) degree from an accredited law school.

Certifications:

  • Registration to practice with the United States Patent and Trademark Office (USPTO).
  • Active membership in the District of Columbia Bar or eligibility to waive into the Bar.

Skills:

  • Strong analytical skills to assess patentability and infringement issues.
  • Exceptional verbal and written communication skills.
  • Proficiency in drafting and negotiating IP-related agreements.
  • Ability to provide strategic guidance on intellectual property matters.
  • Strong organizational and project management skills.
  • Proficient in conducting prior art searches and patent prosecution.
  • Client counseling and portfolio management expertise.
  • Detail-oriented with a keen eye for accuracy and precision.

 

Company info

BCG Attorney Search
1629 K ST NW, Suite 300
Washington
District of Columbia
United States 20006
Phone : (202) 955-5585
Fax : (213) 895-7306

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