Senior Patent Prosecution Attorney

A law firm in Minneapolis, MN, is seeking a Senior Patent Prosecution Attorney with 8+ years of experience. The ideal candidate will possess a robust technical background, particularly in electrical engineering or a related discipline, and must be registered to practice before the U.S. Patent and Trademark Office.

Duties and Responsibilities:

• Manage and oversee a diverse patent prosecution docket, including drafting and prosecuting patent applications.
• Conduct thorough prior art searches and patentability assessments.
• Analyze and respond to office actions issued by the U.S. Patent and Trademark Office.
• Provide strategic counseling on patent portfolio management and IP strategies.
• Advise clients on patent-related matters, including infringement and validity opinions.
• Conduct IP due diligence for mergers, acquisitions, and licensing transactions.
• Mentor junior associates and collaborate with firm attorneys and clients in patent matters.
• Stay abreast of developments in patent law, regulations, and industry trends.

Requirements:

• Juris Doctor (JD) degree from an accredited law school.
• Admission to the bar and in good standing in at least one state.
• Registration to practice before the U.S. Patent and Trademark Office.
• 8+ years of experience in patent prosecution, with a focus on electrical engineering or related fields.
• Proven ability to independently manage a high-volume patent prosecution workload.

Skills and Competencies:

• Exceptional written and verbal communication skills.
• Strong analytical and problem-solving abilities.
• Ability to work effectively both independently and as part of a team.
• Proficiency in conducting prior art searches and patentability assessments.
• Experience in drafting patent applications and responses to office actions.
• Demonstrated leadership and mentoring capabilities.

Education and Certifications:

• Bachelor’s degree in Electrical Engineering or a related technical discipline.
• Juris Doctor (JD) degree from an accredited law school.
• Admission to and active membership in at least one State Bar.

With offices in Minnesota and Texas, this reputed law firm focuses on all aspects of intellectual property law, including foreign patent prosecution, licensing and administrative proceedings. High-technology computer hardware-software, ecommerce, electronic, and medical device inventions are a few of its practice sectors. The firm is comprised of a sizable group of very skilled attorneys and patent agents.