Patent Agent - Technology

Job Overview:
A global law firm is seeking a skilled Patent Agent to join a renowned Intellectual Property Practice Group. The role involves preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office (USPTO), offering substantial client responsibilities and a hybrid work model. This position allows candidates to contribute to cutting-edge technological innovations across various industries, including electrical, computer, and mechanical engineering. The ideal candidate will be experienced in patent prosecution and eager to grow within a collaborative environment, receiving guidance from partners in the practice group.

Location:

• Palo Alto, CA

Duties:

• Prepare, file, and prosecute patent applications before the USPTO
• Conduct prior art searches and perform patentability analysis
• Engage in IP due diligence
• Build and maintain client relationships through practice development activities
• Draft and send 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 technical concepts, particularly in electrical, computer, and mechanical engineering
• Study and analyze scientific and technical documents to assess patentability, novelty, and inventiveness
• Convert provisional applications into utility applications
• Convert foreign applications into U.S. applications and vice versa

Requirements:

• Minimum 2 years of experience prosecuting or examining patent applications in the electrical arts
• Experience with patent applications in technology fields, including electrical, computer, or mechanical engineering
• Strong client-facing experience, with the ability to manage relationships and provide legal counsel
• Excellent written and verbal communication skills
• Strong organizational skills with attention to detail

Education:

• Bachelor’s or graduate degree in electrical engineering, computer science, physics, computer engineering, or mechanical engineering

Certifications:

• Registered to practice before the U.S. Patent and Trademark Office (USPTO) or eligible to sit for the USPTO patent agent exam

Skills:

• Proficient in patent prosecution and analysis
• Ability to apply advanced concepts across various technical fields
• Strong research, writing, and communication skills
• Client relationship management and development
• Organizational and time-management skills

Benefits:

• Hybrid working model (in-office and remote options)
• Law school tuition reimbursement program for eligible employees interested in pursuing a Juris Doctorate degree
• Comprehensive benefits package, including healthcare, retirement plans, and more

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.