Patent Agent - Technology

Profile

Job Overview:
A prominent law firm is seeking a Patent Agent with expertise in technology, specifically in electrical, computer, or mechanical engineering, to join its highly respected Intellectual Property Practice Group. This role involves preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office (USPTO), as well as providing strategic intellectual property services to domestic and international clients. The position offers the opportunity to work in a collaborative, dynamic environment with significant client interaction and the flexibility of a hybrid in-office/remote working schedule.

Location:

• Philadelphia, PA

Duties:

• Prepare, file, and prosecute patent applications before the USPTO
• Conduct prior art searches and analysis
• Perform patentability analysis
• Assist with intellectual property (IP) due diligence
• Engage in practice development activities to foster client relationships
• Draft and prepare client correspondence
• Instruct local counsel for foreign filings and Office Actions
• Assist with patent clearance studies and other patent-related opinion projects
• Apply advanced technical concepts, with a focus on electrical, computer, and mechanical engineering
• Study and analyze scientific or technical documents, including published patents, to assess patentability, novelty, and inventiveness
• Convert provisional applications into utility applications
• Convert foreign filed applications into U.S. applications and vice versa

Requirements:

• Minimum of 2 years of experience in prosecuting or examining patent applications in the electrical arts
• Bachelor’s degree (or graduate degree) in electrical engineering, computer science, physics, computer engineering, or mechanical engineering
• Registered to practice before the U.S. Patent and Trademark Office (USPTO) or eligible to sit for the USPTO patent agent exam
• Excellent writing, research, and communication skills
• Strong organizational skills and attention to detail

Education:

• Bachelor’s or graduate degree in electrical engineering, computer science, physics, computer engineering, or mechanical engineering

Certifications:

• Registration to practice before the USPTO, or eligibility to sit for the USPTO patent agent exam

Skills:

• Proficient in patent prosecution and analysis
• Ability to engage with complex technical concepts across various engineering disciplines
• Excellent written and verbal communication skills
• Strong research and analytical skills
• Client-facing experience and ability to build and maintain relationships

Benefits:

• Hybrid working model offering a balance of in-office and remote work
• Law school tuition reimbursement program for eligible employees interested in pursuing a Juris Doctorate degree
• Comprehensive benefits package, including healthcare, retirement plans, and more

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