Patent Agent

Profile

A law firm in New York City, NY, is seeking a Patent Agent with at least 3 years of experience. The Patent Agent will be responsible for preparing patent applications, responding to communications from patent offices, evaluating technological aspects of inventions, and serving as a liaison between inventors and the Patent and trademark Office.

Duties:

• Prepare draft patent applications and incorporate scientific aspects of inventions.
• Draft responses to communications from U.S. and foreign patent offices regarding factual and scientific matters.
• Evaluate and report on technological aspects of inventions and conduct investigations into relevant technologies.
• Discuss scientific aspects of inventions with clients and inventors.
• Identify and analyze complex patent issues, implementing solutions as necessary.
• Act as a liaison between inventors and the Patent & Trademark Office throughout the patent application process.
• Communicate with staff, clients, and PTO personnel via face-to-face meetings, email, and telephone.
• Maintain professionalism, safeguard confidentiality, and interact courteously with clients, lawyers, and employees at all levels.
• Organize and prioritize tasks, meeting deadlines efficiently and cost-effectively.
• Stay current with technology trends and make technology recommendations.
• Undertake continuing education to maintain appropriate accreditation.
• Enter, maintain, and analyze data used for reports within the firm.

Requirements:

• A minimum of 3 years of experience as a patent agent.
• Bachelor's degree in biomedical engineering, mechanical engineering, physics, material science, or a related medical device technology field preferred, with relevant research experience; or Master's or Ph.D. in a related field.
• Qualified to sit for the Patent Bar.
• Solid experience in patent prosecution, with some exposure to patent portfolio analysis, due diligence, or other IP transactional matters.
• Experience in PTAB (Patent Trial and Appeal Board) proceedings is a plus.
• Excellent academic record and registered to practice before the U.S. Patent and Trademark Office.

Education:

• Bachelor's degree or higher in a relevant field.

Certifications:

• Qualified to sit for the Patent Bar.

Skills:

• Ability to analyze, interpret, and report on research findings.
• Knowledge of patent drafting procedures and standards.
• Familiarity with current and emerging developments in the field.
• Proficiency in research principles, methods, and techniques.
• Familiarity with time management and docketing software.
• Proficiency in Microsoft Outlook, Word, and Excel.
• Ability to work flexible hours, including evenings and weekends, when necessary to meet deadlines.
• Hybrid work arrangement, requiring a minimum of three days in the office and up to two days remote work.

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