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Job Details

Associate life Sciences Patent Prosecution

Company name
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C

Experience
2 yrs required

Location
New York City, NY, United States

Employment Type
Full-Time

Industry
Legal

Posted on
Sep 19, 2022

Valid Through
Jan 02, 2023

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Profile

Patent Agent or Associate (Life Sciences) – Patent Prosecution

The candidate will assess scientific literature, patents and patent applications in a variety of biology fields, including cell biology, cancer biology, immunology, genetics, and molecular biology. Understand, critique and provide insightful opinion on scientific data relating to inventions. Conduct comprehensive searches for scientific articles, patents and patent applications relevant to inventions. Perform in-depth analysis comparing inventions with existing technologies. Identify essential elements, features or components of invention. Compose patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention, and a set of claims clearly and distinctly defining the invention; and conduct inventorship determination and analysis. Draft responses to rejection of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, providing detailed analysis of the scientific or patent references cited in the rejection, assessing the difference between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent. Conduct freedom-to-operate and patentability reviews and analyses on prior art references and patent documents; prepare and review information disclosure statements and similar disclosures for submission before the USPTO and foreign jurisdictions. Collaborate with colleagues on various projects; adapt effectively in different team environments; present ideas, reasoning and conclusions in a concise way to colleagues; provide insightful feedback and arguments to colleagues on their ideas. Work with clients in prosecuting patent applications; formulate and ask clients questions essential to clarifying the distinct features or properties of the invention; investigate and respond promptly to clients' inquiries about the prosecution of patent applications. Ph.D. degree in Molecular Biology, Genetics, Immunology or a related biological science is required. Should have 2+ years of patent drafting and searching experience at a law firm for agents. IP litigation experience or clerkship/judicial internship is preferred for associates. USPTO or Bar admission required and post-doc preferred.

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