Patent Prosecution Technical Advisor

BCG Attorney Search; San Diego (CA); On-site; USD 120,000 - 200,000; Full time

Benefits offered by this job

Comprehensive benefits package

Job summary

BCG Attorney Search in San Diego, CA seeks a Technical Advisor with a strong background in computer science or engineering to draft patent applications and manage patent prosecution for clients. The role involves collaborating with a technical and legal team to advance filing strategies and respond to office actions.

The ideal candidate has experience in patent drafting/prosecution, strong analytical skills, and excellent communication.

Qualifications

• Must have strong analytical and problem-solving abilities.
• Experience drafting patent applications and prosecuting patents.
• Excellent written and verbal communication skills.
• Ability to balance multiple priorities in a demanding environment.
• Strong organizational skills and attention to detail.
• Ability to collaborate effectively in team settings.

Responsibilities

• Review invention disclosures and conduct meetings.
• Conduct prior art searches and assess patentability.
• Draft patent applications for filing.
• Review USPTO office actions and formulate responses.
• Manage U.S. and foreign dockets.
• Analyze patents for due diligence and freedom-to-operate.

Skills

Patent drafting

Patent prosecution

Technical background in CS/EE

Team collaboration

Education

Degree in technology field

Job description

Job Overview

Job OverviewA law firm seeks a Technical Advisor for its San Diego, CA office. The ideal candidate will have a background in technology fields such as computer science, electrical engineering, mechanical engineering, or chemical engineering. This role involves working with a team to draft patent applications and manage patent prosecution processes.

Duties

• Review invention disclosure documents and conduct invention disclosure meetings.
• Conduct prior searches, review references, and analyze patentability.
• Draft patent applications.
• Review USPTO office actions, formulate response strategies, and conduct examiner interviews.
• Manage U.S. and foreign dockets.
• Analyze patents for due diligence and freedom to operate analyses.

Requirements

• USPTO admission is preferred.
• Technology background in computer science, electrical engineering, mechanical engineering, or chemical engineering.
• Prior work experience in a law firm is strongly preferred.
• Excellent written and verbal communication skills.
• High level of professionalism with demanding clients.
• Ability to balance and prioritize multiple responsibilities.
• Strong organizational skills and attention to detail.
• Ability to collaborate effectively in team settings.

Education

• Degree in a relevant technology field preferred.

Certifications

• USPTO admission preferred.

Skills

• Strong analytical and problem-solving skills.
• Proficiency in patent drafting and prosecution.
• Effective communication and collaboration abilities.

Benefits

• Comprehensive benefits package.