Biotechnology Patent Agent

Profile

A law firm in San Diego, CA, is seeking a highly skilled and motivated Biotechnology Patent Agent to join its growing intellectual property practice. The ideal candidate will engage with early- to mid-stage biotechnology, bioinformatics, biopharmaceutical, and diagnostics clients, providing patent prosecution and strategic IP counseling. The role involves working closely with inventors to draft and prosecute U.S. and foreign patent applications, conducting analyses related to patentability, freedom-to-operate, and infringement, and supporting IP due diligence for investments and collaborations. This position offers an excellent opportunity to work in cutting-edge technologies, including biotechnology, AI, and medical devices, within a flexible and rewarding work environment.

Duties and Responsibilities:

• Directly engage with clients in biotechnology, bioinformatics, biopharmaceuticals, and diagnostics to coordinate and manage invention disclosures.
• Draft life sciences patent applications related to biotechnology, diagnostics, and bioinformatics, ensuring compliance with USPTO standards.
• Prosecute U.S. patent applications, including responding to office actions, conducting interviews with patent examiners, and advising clients on patent strategies.
• Oversee foreign patent prosecution by coordinating with foreign associates to ensure the protection of intellectual property in key markets.
• Conduct patentability, freedom-to-operate, and infringement analyses to assess the scope of potential patent rights and identify any risks to clients’ intellectual property.
• Support IP due diligence during mergers, acquisitions, joint ventures, collaborations, and licensing deals, advising clients on the strengths and weaknesses of IP portfolios.
• Collaborate with senior attorneys, regulatory advisors, and technology transactions lawyers to provide clients with comprehensive IP protection strategies, especially for convergent technologies like AI and medical devices.
• Stay updated on developments in biotechnology patent law and provide guidance to clients on new opportunities or risks.
• Maintain strong, clear communication with clients, keeping them informed about the status of patent applications and any IP-related issues.

Requirements:

• 5-8 years of experience in patent prosecution within the biotechnology and life sciences fields.
• Registration to practice before the U.S. Patent and Trademark Office (USPTO) is required.
• Strong understanding of U.S. patent law and familiarity with foreign patent prosecution processes.
• Proven experience drafting and prosecuting patent applications in biotechnology, bioinformatics, diagnostics, and related fields.
• Expertise in conducting patentability, freedom-to-operate, and validity/infringement analyses.
• Ability to manage client relationships, providing strategic IP advice and effectively communicating complex legal and scientific concepts.
• Familiarity with due diligence processes in mergers, acquisitions, and licensing transactions.

Education and Certifications:

• Undergraduate degree in life sciences (e.g., molecular biology, biochemistry, biomedical engineering, organic chemistry, immunology, etc.) is required.
• Advanced degrees in life sciences (e.g., Master’s or Ph.D.) are strongly preferred but not required.
• Registered to practice before the USPTO and in good standing.

Skills:

• Strong technical understanding of life sciences, including biotechnology, bioinformatics, biopharmaceuticals, and diagnostics.
• Proficient in patent drafting and prosecution, with strong attention to detail in preparing technical legal documents.
• Excellent legal research and analytical skills, with the ability to conduct complex patentability and freedom-to-operate searches.
• Ability to communicate complex scientific and legal concepts clearly to clients, colleagues, and patent examiners.
• Collaborative team player who can work closely with attorneys, regulatory advisors, and clients.
• Strong organizational skills, with the ability to manage multiple tasks and deadlines in a fast-paced environment.

Benefits:

• Percentage-based compensation plan that generously rewards hard-working practitioners while offering flexibility for work/life balance.
• Opportunity to work on cutting-edge technologies and collaborate with experts in biotechnology, AI, medical devices, and more.
• Professional development opportunities, including the potential to work on high-profile IP due diligence in significant mergers, acquisitions, and collaborations.
• Flexible work environment with a focus on maintaining a healthy work-life balance.
• Access to a diverse and entrepreneurial team that encourages innovation and career growth.

Company info

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