Patent Prosecution Agent

A law firm is seeking an experienced Patent Prosecution Agent to join its Intellectual Property (IP) team in Boston, MA. The ideal candidate will be responsible for preparing and prosecuting patent applications, developing IP strategies, and managing client portfolios, with a focus on life sciences and medical-related inventions. This position requires a strong technical background, exceptional writing and analytical abilities, and deep knowledge of patent prosecution laws. Candidates with a Ph.D. in life sciences or medicine and a USPTO registration are strongly encouraged to apply.

Key Responsibilities

• Patent Preparation & Prosecution
  • Prepare and file patent applications for life sciences and medical-related inventions.
  • Respond to office actions and manage the prosecution process through the United States Patent and Trademark Office (USPTO).
  • Work closely with inventors to draft patent claims and descriptions that accurately reflect the innovation.
  • Ensure compliance with all relevant regulations and laws governing patents.
• IP Strategy & Portfolio Management
  • Develop and manage clients' intellectual property portfolios, including strategy and protection of inventions.
  • Provide strategic advice on IP matters to clients in the life sciences and medical fields.
  • Conduct patentability, freedom-to-operate, and validity assessments.
  • Collaborate with attorneys and business leaders to align IP strategies with business objectives.
• Client Communication & Management
  • Communicate regularly with clients to provide updates on patent applications and strategy.
  • Address client concerns and provide expert legal advice related to patent prosecution.
  • Build and maintain strong client relationships, ensuring high levels of client satisfaction.
• Legal Research & Documentation
  • Conduct legal research on emerging IP laws and trends, particularly in the life sciences and medical sectors.
  • Prepare and review legal documents, such as patent applications, assignments, and opinion letters.
  • Ensure that all filings and documentation meet the high standards of the firm and regulatory requirements.

Required Qualifications

• Educational Background
  • Ph.D. in Life Sciences, Biology, Biochemistry, Medicine, or a related field is essential.
  • Strong academic credentials with a demonstrated understanding of life sciences technologies and innovations.
• Certifications & Licenses
  • USPTO Registration is required.
  • Admission to a state bar (optional but preferred).
• Experience
  • Minimum of 2-5 years of experience in patent preparation, prosecution, and IP portfolio management.
  • Proven track record of successfully prosecuting patents in the life sciences or medical field.
  • Experience in client management and advisory roles is highly desirable.
• Skills & Competencies
  • Exceptional writing and analytical skills with a focus on drafting precise and effective patent applications.
  • Strong attention to detail and the ability to manage multiple projects and deadlines.
  • Excellent communication and interpersonal skills for interacting with clients and team members.
  • Ability to work independently and collaboratively in a fast-paced legal environment.
  • Proficient in patent-related research and use of patent databases.

Benefits

• Compensation & Incentives
  • Discretionary bonus based on individual and firm performance.
  • Overtime pay, if applicable.
• Health & Wellness
  • Comprehensive health and welfare benefits, including medical, dental, and vision insurance.
• Financial Security
  • Firm contributions to retirement plans, including 401(k).
• Paid Time Off (PTO)
  • Paid holidays and generous PTO allowances to support work-life balance.

Specializing in business, litigation, intellectual property, regulatory, and tax, this firm represents some of the largest financial institutions, Fortune 100 companies, leading technology and life sciences companies. With offices around the globe, the firm handles some of the world's largest cross-border transactions and resolves major disputes across multiple jurisdictions.