Technology Patent Agent

Job Overview: A law firm in Palo Alto, CA, is seeking a Technology Patent Agent to join their team. The Technology Patent Agent will play a crucial role in preparing, filing, and prosecuting patent applications, conducting prior art searches, and engaging in practice development activities. The ideal candidate should have a background in electrical engineering or related fields, with experience in display technologies and rechargeable battery technologies being advantageous.

Duties:

• Prepare, file, and prosecute patent applications before the US Patent and Trademark Office.
• Conduct prior art searches and analyses to evaluate the novelty of inventions.
• Perform patentability analysis to determine the potential for a patent grant.
• Engage in practice development activities to build and maintain client relationships.
• Prepare substantive client correspondence related to patent matters.
• Instruct local counsel for foreign filings and Office Actions.
• Assist in patent clearance studies and other patent-related opinion projects.
• Apply advanced concepts in life sciences fields, with a focus on molecular biology, cell biology, and biochemistry.
• Study and analyze scientific or technical documents, including patent documents, to assess patentability.
• Draft new patent applications to protect innovative technologies.
• Convert provisional applications into utility applications and foreign-filed applications into U.S. applications.
• Convert U.S. applications into foreign applications as needed.

Requirements:

• Bachelor’s degree (or graduate degree) in electrical engineering, with consideration for degrees in computer science, software engineering, or related areas.
• Experience with display technologies (e.g., LCD, OLED) or rechargeable battery technologies (e.g., for electric vehicles) is a plus.
• Previous experience in drafting patent applications and patent prosecution is preferred.
• Eligibility to sit for the US Patent and Trademark Office (USPTO) patent agent exam.

Skills:

• Proficiency in patent preparation, filing, and prosecution processes.
• Strong analytical and research skills for conducting prior art searches and patentability analysis.
• Excellent written and verbal communication skills for client correspondence.
• In-depth knowledge of life sciences, molecular biology, cell biology, and biochemistry.
• Ability to draft patent applications and convert different types of applications.
• Legal acumen in patent-related matters.
• Familiarity with the USPTO patent agent exam requirements.

Certifications:

• Eligibility to sit for the USPTO patent agent exam.

This position offers a competitive salary and benefits package, including a full range of medical, financial, and other benefits, 401(k) eligibility, and various paid time off benefits, such as vacation, sick time, and parental leave.

This large law firm opened with a labor and leveraged-leasing practice and quickly built a substantial corporate and litigation practice. Today, the firm focuses its practice on business and finance, investment management, litigation, labor and employment, real estate and environmental issues. Attorneys at the firm enjoy a faily casual, though conservative, environment where partners tend to be collegial and offer excellent formal and informal training programs. In addition to recieving fair market salaries, associates at the firm have the opportunity to participate in award winning pro bono work.