A full-service, leading global law firm is currently seeking a Patent Agent with 1-5 years of experience for the NY office.
Excellent academic credentials, experience writing patent applications and a license to practice before the United States Patent and Trademark Office are a must.
Essential Duties and Responsibilities:
- Communicate with, and act as liaison between, inventors and Patent & Trademark Office in connection with all aspects of patent application process.
- Evaluate and report on the technological aspects of inventions and other scientific matters. Advise attorneys on general and specific technologies and investigate those technologies as needed.
- Prepare draft patent applications in particular incorporating scientific aspects of inventions.
- Prepare draft responses to communications from U.S. and foreign patent offices with regard to factual and other scientific matters.
- Discuss the scientific aspects of inventions with clients and inventors and thereafter provide attorneys with a report on those discussions.
- Draft, organize, analyze, review and summarize documents.
- Review and analyze client and other files.
- Conduct regulatory and factual research.
- Communicate face-to-face, by e-mail and by telephone with staff, clients, vendors, and PTO and agency personnel.
- Coordinate workflow with outside service providers.
- Organize and prioritize numerous tasks and complete them under time constraints in an efficient and cost effective manner.
- Identify and analyze complex patent issues and problems and implement solutions.
- Interact professionally with clients, lawyers, and employees at all levels and provide information with ordinary courtesy and tact while safeguarding confidentiality.
- Provide direction and guidance to legal support staff on specific issues, as appropriate.
- Stay abreast of technology trends and make recommendations regarding technology needs.
- Undertake continuing education, and remain abreast of current patent prosecution issues and trends, as required to maintain appropriate accreditation in the field.
- Perform miscellaneous job-related duties as assigned.
- Advanced working knowledge of database research principles, methods, techniques, and resources.
- Ability to analyze, interpret, and draw inferences from research findings, and prepare reports.
- Ability to provide operational guidance and leadership to technical staff in area of specialty.
- Strong investigative and problem resolution skills.
- Knowledge of principles, procedures, and standards for drafting a range of complex patent documentation in area of expertise.
- Ability to effectively communicate complex factual, technical information.
- Ability to develop and maintain recordkeeping systems and procedures.
- Ability to use independent judgment and to manage and impart confidential information.
- Strong interpersonal skills and the ability to work effectively with a wide range of individuals.
- Advanced oral and written communication skills.
- Knowledge of current and emerging developments and trends within area of expertise.
- Ability to organize and prioritize numerous tasks and complete them under time constraints.
- Ability to learn and capably use various software packages.
- Ability to operate standard office equipment.
- Knowledge of and use of time management and project management strategies.
- Ability to facilitate individual and group meetings.
- Ability to understand and comply with confidentiality issues and ethical responsibilities
- Ability to travel to private and public buildings via private or public conveyance to assist in attending to client needs on legal matters.
- Within the resident office, there is daily contact with partners, associates, paralegals, and office personnel at all levels. There is a moderate amount of contact with these same groups in other offices.