Patent Agent - Intellectual Property

Job Overview

A law firm seeks a Patent Agent to join its Intellectual Property Practice Group in Silicon Valley, CA. The role involves preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office. The position offers a hybrid in-office/remote working schedule and involves significant client responsibilities.

Duties

• Prepare, file, and prosecute patent applications before the USPTO.
• Perform prior art searches and patentability analysis.
• Conduct IP due diligence and engage in practice development activities.
• Prepare substantive client correspondence.
• Instruct local counsel for foreign filings and Office Actions.
• Assist in patent clearance studies and other patent-related opinion projects.
• Apply advanced concepts in technology fields, especially in electrical, computer, and mechanical engineering.
• Analyze scientific or technical documents to assess patentability, novelty, and inventiveness.
• Convert provisional applications into utility applications and foreign filed applications into U.S. applications.

Requirements

• Minimum 2 years of experience prosecuting or examining patent applications in the electrical arts.
• Registered to practice before the USPTO or eligible to sit for the patent agent exam.
• Excellent writing and research abilities, with strong organizational skills.

Education

• Bachelor's or graduate degree in electrical engineering preferred; degrees in computer science, physics, computer engineering, or mechanical engineering considered.

Certifications

• Registered to practice before the U.S. Patent and Trademark Office.

Skills

• Proficiency in written and verbal communication.
• Strong organizational skills.

Benefits

• Law school tuition reimbursement program.
• 401(k) plan and Company-sponsored medical, dental, vision, life, and disability insurance plans.
• Health savings and flexible spending accounts.
• Employee Assistance Program and Work/Life Services.
• 9 paid holidays, 2 personal days, and up to 20 vacation days per year.
• Paid sick leave, bereavement leave, parental leave, and pregnancy disability 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.