Job Overview:
A prominent law firm is seeking a skilled Patent Agent with a background in biomedical engineering, mechanical engineering, physics, material science, or related medical device technology. The ideal candidate should possess 3+ years of experience in patent prosecution, with some exposure to patent portfolio analysis, due diligence, or other intellectual property transactional matters. Experience with PTAB proceedings is a plus, but not required. This position requires the ability to communicate complex technical matters, liaise with inventors and the U.S. Patent and Trademark Office (USPTO), and manage multiple projects efficiently.
Location:
Duties:
- Prepare draft patent applications, incorporating scientific aspects of inventions.
- Draft responses to communications from U.S. and foreign patent offices concerning factual and scientific matters.
- Evaluate and report on technological aspects of inventions, conducting research as necessary.
- Discuss scientific aspects of inventions with clients and inventors.
- Identify and analyze complex patent issues and provide solutions.
- Act as a liaison between inventors and the Patent & Trademark Office.
- Communicate effectively with clients, staff, and PTO personnel through various methods.
- Maintain professionalism and confidentiality in all communications.
- Organize, prioritize, and complete multiple tasks under time constraints.
- Stay updated on technology trends and make recommendations as needed.
- Participate in continuing education to maintain appropriate accreditation.
- Enter and analyze data for lawyer and staff reports as required.
Requirements:
- 3+ years of experience in patent prosecution or related IP areas.
- Bachelor’s degree in biomedical engineering, mechanical engineering, physics, material science, or related medical device technology (Master’s or Ph.D. preferred).
- Registered to practice before the USPTO or qualified to sit for the patent bar.
- Strong analytical, investigative, and problem-solving skills.
- In-depth knowledge of patent documentation and procedures in the candidate's area of expertise.
- Familiarity with emerging developments and trends in technology.
- Proficient with research principles, methods, and techniques.
- Ability to organize and prioritize tasks effectively under deadlines.
- Excellent oral and written communication skills for conveying technical information clearly.
- Proficient in time management software and Microsoft Office Suite (Outlook, Word, Excel).
- Knowledge of prosecution docketing systems is a plus.
- Ability to maintain confidentiality and adhere to ethical responsibilities.
- Willingness to work additional hours when necessary to meet deadlines.
Education:
- Bachelor’s degree in biomedical engineering, mechanical engineering, physics, material science, or related medical device technology required.
- Master’s or Ph.D. in a related field preferred.
Certifications:
- Registered to practice before the U.S. Patent and Trademark Office (USPTO) preferred.
- Qualified to sit for the patent bar.
Skills:
- Expertise in patent prosecution and preparation of patent applications.
- Strong technical background in biomedical engineering, mechanical engineering, physics, or material science.
- Investigative and problem resolution skills.
- Advanced communication skills (both oral and written).
- Strong organizational and time-management abilities.
- Proficient in MS Office (Word, Excel, Outlook) and time management software.
- Experience with patent docketing systems is beneficial.
- Hybrid work arrangement (minimum of 3 days per week in the office, up to 2 days per week remote).
- Competitive salary based on experience.
- Opportunity for professional development and continuing education.
- Dynamic and collaborative work environment.
Company info
BCG Attorney Search
1629 K ST NW, Suite 300
Washington
District of Columbia
United States 20006
Phone : (202) 955-5585
Fax : (213) 895-7306