Patent Prosecution Attorney (Remote/Hybrid - Computer Science or Electrical Engineering)

BCG Attorney Search; New York (NY); Remote; USD 150,000 - 210,000; Full time

Benefits offered by this job

Remote work options

Competitive compensation

Performance-based pay

Client origination credit

Job summary

BCG Attorney Search in New York seeks a Patent Prosecution Attorney to join its intellectual property practice. You will work with emerging technology companies and Fortune 100 clients to develop innovative patent portfolios.

The role emphasizes strong patent drafting, Office Action responses, and collaboration with inventors and cross-functional teams. A J.D. and USPTO registration are required, with experience guiding sophisticated client matters.

Qualifications

• J.D. from an accredited law school.
• Admission to at least one U.S. state bar.
• Registration to practice before the U.S. Patent and Trademark Office.
• Technical degree in Computer Science, Electrical Engineering, Computer Engineering, or a related discipline.
• At least two years of patent prosecution experience.
• Strong patent drafting and Office Action response experience.
• Excellent analytical and written communication skills.
• Ability to manage sophisticated client matters independently.

Responsibilities

• Prepare and prosecute U.S. patent applications before the USPTO.
• Conduct inventor interviews and invention disclosure meetings.
• Draft patent specifications and claims for sophisticated technologies.
• Respond to Office Actions.
• Develop patent portfolio strategies for technology companies.
• Collaborate with inventors, engineering teams, and in-house IP counsel.
• Coordinate with foreign counsel regarding international patent portfolios.
• Counsel clients on patentability and intellectual property strategy.
• Assist clients with portfolio management and long-term IP planning.

Skills

Patent drafting

Office Action responses

Independent client matters

Education

J.D. from an accredited law school.

Job description

Job OverviewA law firm seeks a Patent Prosecution Attorney to join its intellectual property practice at its New York office. This role involves working with emerging technology companies and Fortune 100 clients to develop innovative patent portfolios.

Duties

• Prepare and prosecute U.S. patent applications before the USPTO.
• Conduct inventor interviews and invention disclosure meetings.
• Draft patent specifications and claims for sophisticated technologies.
• Respond to Office Actions.
• Develop patent portfolio strategies for technology companies.
• Collaborate with inventors, engineering teams, and in-house IP counsel.
• Coordinate with foreign counsel regarding international patent portfolios.
• Counsel clients on patentability and intellectual property strategy.
• Assist clients with portfolio management and long-term IP planning.

Requirements

• J.D. from an accredited law school.
• Admission to at least one U.S. state bar.
• Registration to practice before the U.S. Patent and Trademark Office.
• Technical degree in Computer Science, Electrical Engineering, Computer Engineering, or a related discipline.
• At least two years of patent prosecution experience.
• Strong patent drafting and Office Action response experience.
• Excellent analytical and written communication skills.
• Ability to manage sophisticated client matters independently.

Education

• J.D. from an accredited law school.

Certifications

• Admission to at least one U.S. state bar.
• Registration to practice before the U.S. Patent and Trademark Office.

Skills

• Strong patent drafting and Office Action response experience.
• Excellent analytical and written communication skills.
• Ability to manage sophisticated client matters independently.

Benefits

• Highly competitive compensation.
• Performance-based compensation tied to billed work.
• Significant credit for client origination.
• Flexible remote work opportunities.
• Opportunity to work with sophisticated technology clients.
• Collaborative, entrepreneurial practice environment.