Patent Prosecution Patent Agent

Boston office of a BCG Attorney Search Top Ranked Law Firm seeks a patent prosecution patent agent with 3 years of patent prosecution experience in Mechanical Engineering, Electrical Engineering, Computer Science, or a related field. The candidate will work under the supervision and guidance of partners in the Intellectual Property section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, freedom to operate analysis, and due diligence work. Will assess scientific literature, patents, and patent application documents, each encompassing a variety of Mechanical Engineering, Electrical Engineering, Computer Science, and related fields. Understand, critique, and provide insightful opinions on scientific data relating to inventions. Conduct comprehensive searches 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. Draft 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 rejections of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, provide detailed analysis of the scientific or patent references cited in the rejections, assess differences between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent. Conduct freedom-to-operate studies, including analyzing non-infringement and invalidity of competitors patents. 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. Collaboration with team members is an important component of any role at the Firm. Should have a degree in Mechanical Engineering, Electrical Engineering, Computer Science, or a related field. Admission to the USPTO is required. Law firm experience preferred.

The candidate should have verbal skills in presenting scientific concepts, terms, and discoveries to wide audiences, including scientists and non-scientists. Must have demonstrated 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 state-of-the-art, and differentiating and describing important differences among related scientific discoveries or technological breakthroughs. Able to balance and prioritize multiple competing priorities and responsibilities, be highly organized and exercise extreme attention to detail is required. Being able to collaborate and work effectively in team settings is needed.

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.