Senior Intellectual Property Attorney

A law firm in Wilmington, DE is seeking a Senior Intellectual Property Attorney with extensive experience in patent prosecution, including preparing complex patent applications, managing domestic and foreign dockets, and conducting IP-related due diligence. The ideal candidate should possess a strong knowledge of Chemistry, assist the IP litigation team as needed, and be ready to handle a minimum portable book of $200k. This role offers flexibility for consideration at the associate, counsel, or partner level, contingent on experience and business portfolio.

Duties:

• Prepare intricate patent applications, 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.
• Develop claim charts, assess infringement and validity, and conduct IP-related due diligence.
• Stay updated and share expertise on legal case law, rules, and regulations before the US Patent & Trademark Office and other jurisdictional IP offices.
• Provide support to the IP litigation team, including legal research and discovery assistance.

Requirements:

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

This firm focuses on disputes and investigations. They are focused on what is behind the dispute, and are ready for trial. The firm is free of conflicts and is able to advocate in a wide variety of situations. The firm's sole focus is disputes and investigations, which it handles throughout the Americas, Asia (including Hong Kong), the Caribbean and Europe. This firm focuses on conducting arbitrations, litigation, and investigations. The firm possesses both global resources and local market experience, which allows it to pursue positions aggressively for its clients.