Technical Specialist / Patent Agent - Technology

Job Overview: A prominent law firm is seeking a Patent Agent or Technical Specialist to join its Intellectual Property Practice Group. The role involves managing various aspects of patent applications, from preparation and filing to prosecution before the U.S. Patent and Trademark Office (USPTO). The successful candidate will provide high-quality legal services to both domestic and international clients, with significant client responsibilities. This position allows for a hybrid work schedule and offers exposure to a wide range of intellectual property matters.

Location:

• Costa Mesa, CA

Duties:

• Prepare, file, and prosecute patent applications before the USPTO.
• Conduct prior art searches and patentability analyses.
• Perform intellectual property (IP) due diligence.
• Engage in client relationship development and practice development activities.
• Draft substantive client correspondence.
• Instruct local counsel for foreign filings and office actions.
• Assist with patent clearance studies and patent-related opinion work.
• Analyze scientific or technical documents to assess patentability, novelty, and inventiveness.
• Convert provisional applications into utility applications and handle U.S. to foreign application conversions, and vice versa.

Requirements:

• Minimum of 2 years of experience prosecuting or examining patent applications, with a focus on electrical arts (experience in display and battery technology, and optics is preferred).
• Excellent writing, research, and communication skills.
• Strong organizational abilities and attention to detail.

Education:

• Bachelor’s degree (or graduate degree) in electrical engineering preferred. Degrees in computer science, physics, computer engineering, or mechanical engineering will also be considered.

Certifications:

• Registered to practice before the U.S. Patent and Trademark Office or eligible to sit for the USPTO patent agent exam.

Skills:

• Strong expertise in life sciences, particularly molecular biology, cell biology, and/or biochemistry.
• Ability to analyze and apply advanced concepts to patent clearance and IP-related projects.
• Strong client management skills and ability to work collaboratively within a team.

Benefits:

• Hybrid in-office/remote work schedule.
• Competitive salary, with ranges depending on location.
• Annual discretionary bonus eligibility.
• Comprehensive benefits package, including 401(k) plan, medical, dental, vision, life, and disability insurance.
• Health savings and flexible spending accounts.
• Employee Assistance Program, Work/Life Services, and Bright Horizons Back-Up Child Care.
• 9 paid holidays, 2 personal days, and up to 20 vacation days per year.
• Paid parental leave, pregnancy disability leave, and bereavement leave.
• Law school tuition reimbursement program for eligible employees.

This law firm offers comprehensive legal services for all of the major industries. Their areas of practice include energy, intellectual property, labor, employment, benefits, litigation, corporate, finance, and regulation. Their offices are are located all throughout the world.