Patent and Trademark Associate Attorney or Counsel

Profile

A law firm in Austin, TX, is seeking a Patent and Trademark Associate Attorney or Counsel with 1-3 years of experience. The ideal candidate must hold a Bachelor’s degree or an advanced degree in Chemistry, Chemical Engineering, Software Engineering, or a related technical field from a top university. Strong patent prosecution experience, preferably in the energy industry or software development industry, is required. Additionally, candidates should possess trademark experience. Other experience in intellectual property areas, including licensing, technology transactions, diligence, trademarks, copyrights, opinions, and non-disclosure agreements, is advantageous. Candidates must be licensed to practice before the US Patent and Trademark Office, and lawyers must also be licensed in the jurisdiction of their office.

Duties:

• Conduct patent prosecution, including drafting and prosecuting patent applications before the USPTO.
• Provide legal advice and strategic guidance on patent and trademark matters.
• Handle trademark prosecution, including conducting clearance searches, filing trademark applications, and responding to office actions.
• Manage intellectual property transactions, including licensing agreements, technology transfers, and due diligence reviews.
• Draft and negotiate intellectual property agreements, such as licenses, assignments, and non-disclosure agreements.
• Assist with intellectual property litigation matters, including infringement actions and defense.
• Stay abreast of developments in patent and trademark law and industry trends.
• Collaborate with attorneys and support staff on intellectual property matters and client initiatives.
• Communicate effectively with clients, opposing counsel, and patent and trademark office personnel.

Requirements:

• Bachelor’s degree or advanced degree in Chemistry, Chemical Engineering, Software Engineering, or a related technical field from a top university.
• Strong patent prosecution experience, preferably in the energy industry or software development industry.
• Trademark experience is required.
• Additional experience in intellectual property areas, including licensing, technology transactions, diligence, trademarks, copyrights, opinions, and non-disclosure agreements, is a plus.
• Admission to practice before the US Patent and Trademark Office.
• License to practice law in the jurisdiction of the office.

Education:

• Bachelor’s degree or advanced degree in Chemistry, Chemical Engineering, Software Engineering, or a related technical field from a top university.
• Juris Doctor (J.D.) degree from an accredited law school.

Certifications:

• Admission to practice before the US Patent and Trademark Office.
• License to practice law in the jurisdiction of the office.

Skills:

• Strong patent prosecution skills.
• Proficiency in trademark prosecution.
• Knowledge of intellectual property transactions and agreements.
• Excellent written and verbal communication skills.
• Ability to work independently and collaboratively within a team.
• Attention to detail and accuracy.
• Analytical and problem-solving abilities.

Company info

BCG Attorney Search
10777 Westheimer, Suite 1100
Houston
Texas
United States 77042
Phone : (713) 270-1199
Fax : (213) 895-7306