Patent Agent Electrical Engineering & Software

A law firm seeks a qualified and experienced Patent Agent to join its Patent Prosecution & Litigation team in Houston, Texas. This role will focus on electrical engineering and software technologies, providing comprehensive support in patent prosecution and portfolio management. The ideal candidate will have a strong background in electrical engineering, computer science, or a related field, with expertise in drafting patent applications and managing IP portfolios. This position offers the opportunity to work with national and international clients and expand into various areas of intellectual property law.

Duties:

• Lead and manage all aspects of patent portfolio strategy and prosecution for domestic and international clients.
• Prepare, file, and prosecute patent applications with the USPTO and foreign patent offices.
• Conduct patent searches, analyze prior art, and assess patentability for a wide range of technologies.
• Collaborate with clients to understand their technologies and provide strategic guidance on intellectual property matters.
• Assist in expanding patent portfolios by identifying new opportunities and ensuring proper protection of inventions.
• Provide technical insights and support for patent litigation cases, including analysis of patent claims and prior art.
• Stay current on trends and advancements in electrical engineering, software, and related technologies.
• Communicate complex technical concepts clearly to clients and team members, both in writing and orally.
• Explore and contribute to other areas of intellectual property protection as needed, such as trademarks or trade secrets.

Requirements:

• A degree in Electrical Engineering, Computer Science, or a similar technical field (advanced degrees and/or prior work experience before law school or agency exam is preferred).
• A minimum of 5 years of experience in patent prosecution, with a focus on electrical engineering or software-related technologies.
• In-depth knowledge of software, controls, and controller systems; experience with electro-mechanical equipment is a plus.
• Registration with the USPTO is required.
• Exceptional written and verbal communication skills, with the ability to explain complex technical concepts clearly.
• Strong organizational, analytical, and project management skills, with an ability to handle multiple tasks efficiently.
• Knowledge of other forms of intellectual property protection, such as trade secrets or trademarks, is beneficial.

Education:

• A Bachelor’s or advanced degree in Electrical Engineering, Computer Science, or a related technical field is required.

Certifications:

• Registration with the USPTO is mandatory.

Skills:

• Expertise in patent prosecution, including drafting patent applications, responding to office actions, and managing patent portfolios.
• Strong technical background in electrical engineering, software, and control systems.
• Knowledge of patent law and intellectual property strategy.
• Ability to manage a diverse range of projects and deadlines effectively.
• Proficiency with patent search tools and related legal software.
• Excellent interpersonal skills and ability to collaborate effectively with clients and colleagues.
• Strong attention to detail and ability to manage multiple tasks in a fast-paced environment.

Benefits:

• Comprehensive medical, dental, and vision coverage.
• 401(k) retirement plan with employer contributions.
• Paid time off and holidays.
• Opportunities for professional development and growth in the field of intellectual property law.
• Collaborative, inclusive, and dynamic work environment.

Focusing on delivering practical advice across the Atlantic, this firm brings an international perspective and extended jurisdictional reach to a wide range of client needs. The firm invests in its own employees to ensure to deliver high quality, cost-effective and personal service. The lawyers actively contribute time and energy to pro bono and community service projects, both through the firm and individually.