Science Advisor/Patent Agent

BCG Attorney Search; Boston (MA); On-site; USD 80,000 - 130,000; Full time

Job summary

An established industry player is seeking a talented Science Advisor/Patent Agent to enhance its Intellectual Property Transactions & Strategies group. This role offers a unique opportunity to engage with a variety of patent-related issues, from drafting applications to managing IP portfolios for both emerging tech startups and established companies. The ideal candidate will have a strong technical background, excellent communication skills, and a passion for innovation in the tech sector. Join a dynamic team that values collaboration and creativity in developing strategic IP solutions to meet diverse client needs.

Qualifications

• Strong academic credentials in technical fields.
• Proven experience in patent prosecution and drafting applications.

Responsibilities

• Draft and prosecute patent applications for U.S. and foreign matters.
• Conduct due diligence for corporate transactions and technology transfers.

Skills

Patent Law Knowledge

IP Portfolio Management

Patent Search Tools Proficiency

Project Management Skills

Communication Skills

Attention to Detail

Education

Degree in Computer Science

Degree in Engineering

Job description

A leading law firm is seeking a qualified Science Advisor/Patent Agent to join its Intellectual Property Transactions & Strategies (IPTS) group. This role offers an exciting opportunity to work on a broad range of patent-related matters for emerging and established technology companies. The successful candidate will be involved in drafting patent applications, responding to office actions, handling U.S. and foreign prosecution matters, and conducting due diligence for corporate transactions and technology transfers. Additionally, the position involves contributing to the development of intellectual property strategies for both emerging tech startups and public companies.

Location:

Various locations available.

Duties:

1. Draft and prosecute patent applications, focusing on U.S. and foreign prosecution matters.
2. Respond to office actions and work with attorneys to ensure timely and accurate filings.
3. Assist in Inter Partes Reviews (IPRs) and manage freedom to operate analyses.
4. Perform due diligence for corporate transactions, technology transfers, and licensing agreements.
5. Develop and execute strategic IP portfolios for emerging technology companies.
6. Work on portfolio development for public technology companies, focusing on long-term IP strategies.
7. Collaborate with clients to assess their IP needs and offer innovative solutions for their business goals.
8. Monitor and stay informed about trends in technology, patents, and emerging legal standards.

Requirements:

1. Strong academic credentials and a background in technical fields such as computer science, engineering, or related disciplines.
2. Proven experience in patent prosecution, including drafting patent applications and responding to office actions.
3. Familiarity with handling U.S. and foreign prosecution matters.
4. Experience with IPRs and freedom to operate analyses is highly desirable.
5. Ability to conduct IP due diligence and advise on technology transfers and transactions.
6. Admission to the Patent Bar is preferred but not required.
7. Excellent written and verbal communication skills.
8. Ability to work collaboratively and manage independent projects.

Education:

• Degree in relevant technical fields such as Computer Science, Engineering, or related areas.

Certifications:

• Patent Bar admission is preferred but not mandatory.

Skills:

• Strong knowledge of patent law and prosecution process.
• Expertise in managing IP portfolios for tech companies.
• Proficiency with patent search tools and databases.
• Strong project management and communication skills.
• Attention to detail and ability to prioritize tasks.