Patent Agent – Technology

Patent Agent – Technology

Requirements

• Bachelor’s degree (or graduate degree) in Biomedical or Chemical Engineering required.
• Minimum 2 years of experience prosecuting or examining patent applications.
• Registered to practice before the U.S. Patent and Trademark Office.
• Excellent writing and research abilities are a must.
• Proficiency in written and verbal communication.
• Strong organizational skills.

Responsibilities

• Perform patent searching and investigate inventorship issues
• Manage the intake of invention disclosures and review disclosures for patentability, novelty, and non-obviousness
• Evaluate qualification and applicability of prior art
• Study and analyze scientific or technical documents, including previously published patent documents, to assess patentability, novelty and inventiveness
• Draft new patent applications; act as a second reviewer for filings; manage the processing of e-File filings
• Convert prior provisional applications into utility applications, foreign filed applications into U.S. applications and U.S. applications into foreign applications
• Prepare replies to U.S. and foreign office actions
• Assist attorneys with prosecution; identify alternative prosecution scenarios and claim strategies to develop patent portfolios
• Conduct interviews with USPTO examiners; prepare appeals to PTAB and clearance analyses
• Prepare reexamination petitions, reissue applications, and IPR and CBM petitions
• Prepare substantive client correspondence
• Meet with clients to discuss inventions and ascertain whether the inventions are likely to lead to commercially meaningful patent claims
• Provide patent prosecution training.

Preferred Qualifications

No preferred qualifications provided.