Patent Attorney

A law firm in New York City, NY, is seeking a Patent Attorney to join their team. The role involves a diverse range of responsibilities, including patent preparation and prosecution, trademark searching/filing, drafting license agreements, counseling clients on rights enforcement, avoidance of competitors' rights, preparing opinion letters, and designing around competitors' patents. The ideal candidate will hold an advanced degree in Mechanical, Electrical, Computer Engineering, or Computer Science, possess industry experience, and have a Juris Doctorate. They should be registered to practice before the USPTO and admitted to practice law in at least one state, preferably in NJ and/or in NY.

Duties:

• Conduct patent preparation and prosecution.
• Perform trademark searching and filing activities.
• Draft license agreements and provide counseling on rights enforcement.
• Advise clients on avoiding competitors' rights and preparing non-infringement/invalidity opinion letters.
• Counsel clients on designing around competitors' patents.
• Independently oversee legal matters assigned to the professional.

Requirements:

• Advanced degree (Master's, Ph.D., etc.) or equivalent in Mechanical, Electrical, Computer Engineering, or Computer Science. Exceptional candidates with a Bachelor's degree will also be considered.
• Industry experience.
• Graduated from a top ABA-accredited law school.
• Registered to practice before the USPTO.
• Juris Doctorate (J.D.) and admitted to practice law in at least one state, preferably NJ and/or NY.
• 2+ years of IP experience in-house, with a law firm, or a combination of both.
• Demonstrated experience in patent preparation and prosecution and trademark matters.

Skills:

• Exceptional communication skills, including presentation, interpersonal, writing, and conflict resolution.
• Ability to independently oversee legal matters.