Senior Intellectual Property Attorney

A law firm in Philadelphia, PA, is seeking a Senior Intellectual Property Attorney with expertise in preparing complex patent applications, managing a large docket of domestic and foreign prosecution, consulting with clients and inventors, and conducting IP-related due diligence. The ideal candidate should have 6+ years of patent prosecution experience, practical knowledge of Chemistry, and an in-depth understanding of intellectual property laws. This role may require assisting the IP litigation team, legal research, and discovery activities. A minimum portable book of $200k is required, and the candidate can be considered for the associate, counsel, or partner level based on experience and business portfolio.

Duties:

• Prepare complex patent applications and continuations, divisionals, and reissue patent applications.
• Manage a substantial docket of domestic and foreign patent prosecution.
• Consult with clients, inventors, technical experts, and patent portfolio managers.
• Prepare responses to US office actions, conduct interviews with US Examiners, and prosecute a global patent portfolio across multiple jurisdictions.
• Prepare claim charts, analyze infringement and validity, and conduct IP-related due diligence.
• Maintain and share expertise on legal case law, rules, and regulations before the US Patent & Trademark Office and other jurisdictional IP offices.
• Assist the IP litigation team, including legal research and discovery support.

Requirements:

• 6+ years of patent prosecution experience, including preparation and prosecution of domestic and foreign patent applications, client counseling, opinion development, and due diligence activities.
• Practical experience and in-depth knowledge of Chemistry.
• Willingness to assist the IP litigation team as needed.
• A B.S. in Chemistry is required; A Master's or Ph.D. is preferred.
• 2+ years of research or industry experience in organic or inorganic chemistry.
• 6+ years of previous IP law experience, including foreign and domestic patent preparation and prosecution.
• Active USPTO registration.
• IP litigation support experience is preferred.
• Good standing in the Bar(s) where licensed to practice law.
• Superior academic record and strong attention to detail.
• A minimum portable book of $200k is required.

This law firm has two offices located in Wilmington and Philadelphia. Even though this firm only has two offices, they were ranked best law firm of the year in 2015. They continue to have a number of their lawyers ranked for best lawyers year after year. Some have had the title for ten years. The firm has been operating for over five years and they focus on trademarks, copyrights, trade secrets, IP protection, patents, litigation and licensing.