Patent Agent - Technology

Morgan, Lewis & Bockius LLP; Philadelphia (Philadelphia County); Hybrid; USD 109,000 - 175,000; Full time

Job summary

An established industry player is seeking a skilled Patent Agent to join their prestigious Intellectual Property Practice Group. This role offers the opportunity to work on preparing, filing, and prosecuting patent applications, providing high-quality legal services to diverse clients. With a hybrid working schedule, the successful candidate will collaborate closely with partners and gain significant client responsibilities. The firm values innovation and excellence, offering a supportive environment for professional growth and development. If you are passionate about intellectual property and ready to make a meaningful impact, this position is perfect for you.

Benefits

Law school tuition reimbursement

Flexible working hours

Diversity and inclusion initiatives

Qualifications

• Minimum 2 years of experience in patent prosecution or examination.
• Registered to practice before the U.S. Patent and Trademark Office.

Responsibilities

• Perform patent searching and manage invention disclosures.
• Draft new patent applications and prepare client correspondence.
• Conduct interviews with USPTO examiners and prepare appeals.

Skills

Patent prosecution

Research abilities

Communication skills

Organizational skills

Education

Bachelor's degree in Biomedical Engineering

Bachelor's degree in Chemical Engineering

Job description

Morgan, Lewis & Bockius LLP, one of the world's leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is seeking to hire a Patent Agent to join their award-winning Intellectual Property Practice Group and be responsible for preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office ("USPTO").

This position can reside in the Boston, Chicago, or Philadelphia office and offers a hybrid in-office/remote working schedule.

This position will be supervised by an intellectual property partner, but will have daily contact with, and will receive guidance from, all the partners in the practice group for whom this individual provides support. The Patent Agent will work to protect inventions in a manner that is consistent with his/her technical merit, while assuming significant client responsibilities and providing high quality legal services to domestic and foreign clients.

Responsibilities:

• Perform patent searching and investigate inventorship issues

• Manage the intake of invention disclosures and review disclosures for patentability, novelty, and non-obviousness

• Evaluate qualification and applicability of prior art

• Study and analyze scientific or technical documents, including previously published patent documents, to assess patentability, novelty and inventiveness

• Draft new patent applications; act as a second reviewer for filings; manage the processing of e-File filings

• Convert prior provisional applications into utility applications, foreign filed applications into U.S. applications and U.S. applications into foreign applications

• Prepare replies to U.S. and foreign office actions

• Assist attorneys with prosecution; identify alternative prosecution scenarios and claim strategies to develop patent portfolios

• Conduct interviews with USPTO examiners; prepare appeals to PTAB and clearance analyses

• Prepare reexamination petitions, reissue applications, and IPR and CBM petitions

• Prepare substantive client correspondence

• Meet with clients to discuss inventions and ascertain whether the inventions are likely to lead to commercially meaningful patent claims

• Provide patent prosecution training

Education & experience:

• Bachelor's degree (or graduate degree) in Biomedical or Chemical Engineering required.

• Minimum 2 years of experience prosecuting or examining patent applications.

• Registered to practice before the U.S. Patent and Trademark Office.

• Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills

The Intellectual Property Practice Group has a law school tuition reimbursement program to provide financial assistance to eligible employees who apply for and are accepted into the Law School Tuition Reimbursement Program. In order to be eligible for the financial benefits, enrollees must meet all requirements of the program, including, e.g., enrollment and satisfactory completion of courses towards a Juris Doctorate degree from an accredited law school.

#LI-Hybrid

For positions in Chicago, Illinois, the salary range for this position is: $109,300.00 - $174,775.00.

Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.

Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.

California Applicants: Pursuant to the California Consumer Privacy Act, the following link contains the Firm's California Consumer Privacy Act Privacy Notice for Candidates which explains the categories of personal information that we collect and the purposes for which we use such personal information. CCPA Privacy Notice for Candidates

Morgan, Lewis & Bockius, LLP reasonably accommodates applicants and employees who need them to perform the essential functions of the job because of disability, religious belief, or other reason protected by applicable law. If you believe you need a reasonable accommodation during the application process, please contact Talent Acquisition at 888.534.5003 or [e-mail]

If hired, your employment relationship with the firm will be on an "at-will" basis, meaning that the firm may modify the terms and conditions of your employment at any time, and that either you or the firm will be free to end the relationship at any time with or without cause and with or without advance notice, although reasonable notice would be expected.