Patent Prosecution Agent (Chemistry)

New York City office of a BCG Attorney Search Top Ranked Law Firm seeks a patent prosecution agent (chemistry) with 2+ years of the law firm or in-house patent prosecution experience. The candidate will advise clients on obtaining and enforcing patent protection, licensing or acquiring patent rights, executing financing and other business transactions, and navigating the patent landscape in their various industries. Will work under the supervision and guidance of partners in the IP section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, freedom to operate analysis, and due diligence work. Specific duties include the following: Assess scientific literature, patents, and patent application documents, each encompassing a variety of chemical subjects, including organic, synthetic, and medicinal chemistry, as well as material science. Understand, critique, and provide insightful opinions on scientific data relating to inventions. Conduct a comprehensive search for scientific articles, patents, and patent application documents relevant to the subject of an invention. Perform in-depth analysis comparing an invention with existing discoveries or inventions. Identify essential elements, features, or components of an 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. 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. 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 on innovative and cutting-edge technologies to procure patent protection and build IP portfolios. Should have M.S. or Ph.D. degree in Organic or Medicinal Chemistry. Must have knowledge in the following scientific fields: organic chemistry, medicinal chemistry, and pharmaceutical sciences. Should have scientific writing ability using proper grammar and vocabulary that also includes the following skills: analyzing and explaining abstract scientific concepts and terms; synthesizing a large amount of scientific or technological literature into a systematic and concise description of the state of the art, and differentiating and describing important differences among related scientific discoveries or technological breakthroughs. USPTO is required.

The candidate should have demonstrated skills in verbally presenting scientific concepts, terms, and discoveries to wide audiences, including scientists and non-scientists. Must have the ability to balance and prioritize multiple competing priorities and responsibilities, be highly organized, and exercise extreme attention to detail. Should have the ability to collaborate and work effectively in team settings.

Built on excellence and driven by change, this AmLaw 100 firm is appealing to associates for its nimble, collaborative legal teams addressing the shifting legal and regulatory requirements of the global market?s most competitive industries. Associates regard the firm as one of the ?heathiest work environments? they have worked in, as well as dealing with interesting work and early responsibility or junior associates. The firm is dedicated to pro bono work, using their program to provide training and guidance for associates. Compensation at this firm is competitive with peer firms in the region.