Intellectual Property Associate Attorney

Profile

A law firm in Tampa, FL is seeking an Intellectual Property Associate Attorney to join its team. The ideal candidate will have 2-5 years of experience in patent and trademark prosecution as well as IP transactions. The role involves managing day-to-day prosecution dockets, preparing USPTO filings, conducting searches, and preparing clearance opinions and client correspondence. Experience in negotiating and drafting IP transaction and software agreements, along with conducting IP due diligence in M&A transactions, is a plus. A USPTO registration number or patent bar eligibility is strongly preferred. The successful candidate will demonstrate excellent academic credentials, strong written and verbal communication skills, and practical judgment. Admission to practice in Florida, Georgia, California, DC, New Jersey, or New York is required.

Duties and Responsibilities:

• Manage day-to-day prosecution dockets for patents and trademarks, ensuring timely and accurate progress.
• Prepare and file USPTO documents, including patent and trademark applications.
• Conduct comprehensive searches and provide clearance opinions/advice to clients.
• Draft and respond to office actions and maintain correspondence with clients and the USPTO.
• Communicate effectively with clients and colleagues regarding IP matters, providing clear and concise updates.
• Negotiate and draft IP transaction agreements, including software agreements and other related documents.
• Conduct IP due diligence for mergers and acquisitions, including drafting and reviewing M&A transaction documents.
• Maintain and organize client files, ensuring all documentation is accurate and up-to-date.

Requirements:

• 2-5 years of experience in patent and trademark prosecution and IP transactions.
• Experience in negotiating and drafting IP transaction agreements and conducting IP due diligence is a plus.
• USPTO registration number or patent bar eligibility strongly preferred.
• Excellent academic credentials and demonstrated written and verbal communication skills.
• Strong practical judgment and problem-solving abilities.
• Currently admitted to practice in Florida, Georgia, California, DC, New Jersey, or New York.

Education:

• JD degree from an accredited law school.
• Strong academic record with evidence of academic excellence.

Certifications:

• Admission to the Bar in Florida, Georgia, California, DC, New Jersey, or New York.
• USPTO registration number or patent bar eligibility strongly preferred.

Skills:

• Proficiency in managing patent and trademark prosecution dockets.
• Expertise in preparing USPTO filings and responding to office actions.
• Strong negotiation and drafting skills for IP transaction agreements.
• Excellent legal research, communication, and analytical skills.
• Ability to manage multiple tasks and deadlines effectively.
• Capability to work independently as well as part of a collaborative team.

Company info

BCG Attorney Search
801 Brickell Avenue, Suite 900
Miami
Florida
United States 33131
Phone : (305) 570-3575
Fax : (213) 895-7306