Patent Prosecution Attorney

Australia-Employment; Akron (OH); On-site; USD 110,000 - 180,000; Full time

Job summary

Jobot is seeking a Patent Prosecution Attorney for our Akron, OH client base specializing in semiconductor technologies. The attorney will prepare and prosecute patent applications, respond to office actions, and guide complex strategies for multiple clients.

Ideal candidates have a JD from an ABA-accredited school, USPTO registration, at least four years in patent prosecution with semiconductor focus, and strong communication and analytical skills.

Qualifications

• J.D. from ABA-accredited law school.
• USPTO registration (patent bar) required.
• Minimum 4 years patent prosecution experience in semiconductor or related tech.

Responsibilities

• Prepare and prosecute semiconductor patent applications.
• Consult with inventors/clients to develop prosecution strategies.
• Evaluate patentability and provide opinions on semiconductor tech.
• Manage prosecution timelines and deadlines; communicate case status to clients.
• Work with technical experts to resolve rejections and argue for allowance.
• Handle PCT and foreign patent office matters.
• Advise on prosecution strategy, costs, and portfolio development.
• Maintain relationships with clients and USPTO examiners.
• Support business development for the semiconductor practice.
• Stay current on semiconductor tech and patent law.

Skills

Patent prosecution

Semiconductor technology

Technical communication

Legal research

Strategic thinking

Education

Juris Doctor (J.D.)

Electrical Engineering degree

USPTO patent bar admission

Tools

Patent prosecution software

Legal research platforms

Job description

Patent Prosecution Attorney

$100000 - $180000 per year | Akron, OH | On-Site | Permanent

Patent Prosecution Attorney for a boutique firm

A bit about us:

We're a boutique patent firm with a wide variety of clientele!

Why join us?

• Consistent clients
• Supportive partners
• Competitive compensation

Job Details

• Prepare and prosecute patent applications in semiconductor technologies, including written submissions, office action responses, and amendment strategies
• Conduct initial consultations with inventors and clients to understand technical innovations and develop comprehensive prosecution strategies
• Evaluate patentability of semiconductor technologies, conduct prior art searches and analyses, and provide patentability opinions
• Manage prosecution timelines, docket deadlines, and maintain consistent communication with clients regarding case status and strategy
• Work with technical experts and inventors to resolve rejection issues and develop effective arguments for allowance
• Handle International Patent Cooperation Treaty (PCT) and foreign patent office matters, including international phase prosecution
• Provide strategic IP counsel on prosecution decisions, prosecution costs, and portfolio development
• Maintain professionalism and develop strong relationships with clients and USPTO examiners
• Contribute to business development efforts and support growth of the semiconductor patent practice
• Stay current on developments in semiconductor technology, patent law, and USPTO guidance

Required Qualifications

• Juris Doctor (J.D.) degree from an ABA-accredited law school
• Registered to practice before the USPTO (patent bar admission required; current registration required)
• Minimum 4 years of experience in patent prosecution, with demonstrated focus on semiconductor, electrical, electronics, or related technologies
• Strong technical background with expertise in semiconductor device design, IC fabrication, semiconductor physics, or related hardware technologies
• Bachelor's degree in Electrical Engineering, Physics, Materials Science, Chemical Engineering, or related technical field
• Excellent written and oral communication skills with ability to clearly explain complex technical concepts
• Strong analytical and strategic thinking capabilities
• Proficiency in patent prosecution software and legal research platforms
• High attention to detail and ability to manage multiple matters concurrently

Preferred Qualifications

• Advanced degree (M.S., Ph.D., etc.) in a technical field related to semiconductors
• Prior experience at a semiconductor company, design house, or foundry in a technical or R&D role
• Experience handling semiconductor patent prosecution matters covering device design, semiconductor manufacturing, or semiconductor equipment
• Experience with interference and post-grant proceedings (inter partes review, reexamination)
• Strong business development experience and ability to manage client relationships
• Experience supporting technology licensing and acquisition activities

Jobot is an Equal Opportunity Employer. We provide an inclusive work environment that celebrates diversity and all qualified candidates receive consideration for employment without regard to race, color, sex, sexual orientation, gender identity, religion, national origin, age (40 and over), disability, military status, genetic information or any other basis protected by applicable federal, state, or local laws. Jobot also prohibits harassment of applicants or employees based on any of these protected categories. It is Jobot’s policy to comply with all applicable federal, state and local laws respecting consideration of unemployment status in making hiring decisions.

Sometimes Jobot is required to perform background checks with your authorization. Jobot will consider qualified candidates with criminal histories in a manner consistent with any applicable federal, state, or local law regarding criminal backgrounds, including but not limited to the Los Angeles Fair Chance Initiative for Hiring and the San Francisco Fair Chance Ordinance.