Patent Prosecution - Patent Agent (Mechanical Engineering) - BOS | DC

About the Intellectual Property – Patent Prosecution Section

Our patent prosecution team takes our client’s strongest innovations and efficiently crafts patents to obtain protections in mission-critical jurisdictions. We have a deep bench of associates, patent agents, and technical advisors to draft applications, respond to office actions, conduct examiner interviews, and perform freedom to operate studies. We help clients identify innovations, develop prosecution strategy, and ensure quality control – providing critical guidance to help clients succeed.

Responsibilities

We are seeking a patent agent with a degree in mechanical engineering, electrical engineering, computer science or a related field to join our IP Prosecution team. Patent agents collaborate with team members and clients to understand their technology and develop and execute strategies to protect the technology. Patent agents draft and prosecute patent applications, conduct freedom to operate studies, and analyze patents to clear products for market. Boston and DC are the preferred office locations.

• Assess scientific literature, patents, and patent application documents, each encompassing a variety of mechanical engineering, electrical engineering, computer science and related fields
• Understand, critique and provide insightful opinion on scientific data relating to inventions
• Conduct a comprehensive search for scientific articles, patents, and patent application documents relevant to the subject of an invention
• Perform in-depth analysis comparing an invention with existing discoveries or inventions
• Identify essential elements, features or components of an invention
• Compose patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention and a set of claims clearly and distinctly defining the invention
• Draft responses to rejection of a patent application for an invention from the USPTO and other worldwide patent offices, providing detailed analysis of the scientific or patent references cited in the rejection, assessing the difference between the invention and the citations and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent
• Conduct clearance studies to clear clients’ products with respect to competitor patents
• Present ideas, reasoning, and conclusions in a concise way to colleagues and provide insightful feedback and arguments to colleagues on their ideas
• Work with clients on innovative and cutting-edge technologies to procure patent protection and build IP portfolios

Qualifications:

• Degree in mechanical engineering, electrical engineering, computer science or a related field
• Ability to present scientific concepts, analysis, reasoning and conclusions to scientists and non-scientists
• Ability to prioritize competing responsibilities, stay organized and exercise attention to detail
• Ability to collaborate and work effectively in team settings

is an Am Law 100 law firm with over 500 attorneys serving clients worldwide. Our attorneys combine legal, business and industry insight to help navigate shifting challenges. We advise business leaders, entrepreneurs, and investors on pivotal deals, disputes, and regulatory matters within our core practice areas. We are strategically located to meet the needs of our clients, with offices in Boston, Los Angeles, Miami, New York, San Diego, San Francisco, Toronto and Washington, DC.

The salary range for this position is $100,000 to $200,000. This position is bonus eligible.

offers a comprehensive benefits package.