Senior Intellectual Property Attorney

Profile

A law firm in Wilmington, DE is seeking a Senior Intellectual Property Attorney with extensive experience in patent prosecution, including preparing complex patent applications, managing domestic and foreign dockets, and conducting IP-related due diligence. The ideal candidate should possess a strong knowledge of Chemistry, assist the IP litigation team as needed, and be ready to handle a minimum portable book of $200k. This role offers flexibility for consideration at the associate, counsel, or partner level, contingent on experience and business portfolio.

Duties:

• Prepare intricate patent applications, 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.
• Develop claim charts, assess infringement and validity, and conduct IP-related due diligence.
• Stay updated and share expertise on legal case law, rules, and regulations before the US Patent & Trademark Office and other jurisdictional IP offices.
• Provide support to the IP litigation team, including legal research and discovery assistance.

Requirements:

• 6+ years of patent prosecution experience, involving the preparation and prosecution of domestic and foreign patent applications, client counseling, opinion development, and due diligence activities.
• Practical experience and extensive knowledge of Chemistry.
• Willingness to assist the IP litigation team as required.
• A B.S. in Chemistry is mandatory, while a Master's or Ph.D. is preferred.
• 2+ years of research or industry experience in organic or inorganic chemistry.
• 6+ years of previous experience in IP law, encompassing foreign and domestic patent preparation and prosecution.
• Active USPTO registration.
• Preferably, IP litigation support experience.
• Good standing in the Bar(s) where licensed to practice law.
• Outstanding 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