PATENT PROSECUTION AGENT

Company: BCG Attorney Search
Location: San Diego
Posted on: October 19, 2024

Job Description:

A law firm is seeking a highly qualified Patent Prosecution Agent to join its Intellectual Property (IP) practice in San Diego, CA. The successful candidate will be responsible for preparing and prosecuting patent applications, advising clients on IP strategy, and managing patent portfolios. This position requires a Ph.D.-level background in life sciences or medicine, with outstanding writing and analytical skills. The ideal candidate will have 2-20 years of experience in patent prosecution and be registered with the United States Patent and Trademark Office (USPTO). The role offers a competitive compensation package with benefits and growth opportunities in a dynamic, fast-paced environment.
The following information provides an overview of the skills, qualities, and qualifications needed for this role.
Key Responsibilities

• Draft and file patent applications in the life sciences and medical fields.
• Prosecute patent applications before the USPTO, including responding to office actions and handling appeals.
• Conduct interviews with patent examiners to advocate for claim allowance.
• Manage and oversee domestic and international patent prosecution, coordinating with foreign counsel when needed.
• Provide strategic counsel on patent portfolio development and management for clients in the life sciences or medical sectors.
• Develop IP strategies to protect clients' innovations and align with their business objectives.
• Conduct thorough patentability and freedom-to-operate analyses for client technologies.
• Monitor IP portfolios to identify and protect commercially significant innovations.
• Client Communication & Support
  • Communicate effectively with clients to provide updates on patent application progress and IP strategies.
  • Build and maintain strong client relationships, understanding their technical and business needs.
  • Offer expert advice on managing and optimizing intellectual property assets to enhance value.
  • Legal Research & Documentation
    • Research emerging developments in patent law, especially as they pertain to life sciences and medical innovations.
    • Prepare legal documentation, including opinion letters, patent claims, and responses to the USPTO.
    • Ensure that all documentation complies with relevant legal standards and firm policies.Required Qualifications
      • Education
        • Ph.D. in Life Sciences, Biology, Biochemistry, Medicine, or a closely related field.
        • Top-tier academic credentials with in-depth knowledge of biological and medical technologies.
        • Certifications & Licenses
          • USPTO Registration is required.
          • Bar admission (optional but preferred).
          • Experience
            • 2-20 years of experience in preparing and prosecuting patent applications, with a focus on life sciences and medical technologies.
            • Proven experience managing patent portfolios and providing strategic IP counsel to clients.
            • Demonstrated success in handling complex IP matters independently or in collaboration with attorneys.
            • Outstanding writing and analytical skills for drafting detailed and effective patent applications.
            • Strong attention to detail and the ability to handle multiple projects in a fast-paced environment.
            • Excellent communication and interpersonal skills for building client relationships and collaborating with colleagues.
            • Ability to work both independently and as part of a team to deliver high-quality legal services.
            • Proficiency in conducting patent-related research and using patent databases.
            • Compensation & Incentives
              • Competitive salary with a discretionary bonus based on performance.
              • Overtime pay, as applicable.
              • Comprehensive health, dental, and vision insurance.
              • Firm contributions to retirement plans, including 401(k) options.
              • Work-Life Balance
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Keywords: BCG Attorney Search, Laguna Niguel , PATENT PROSECUTION AGENT, Sales , San Diego, California