Patent Prosecution Agent

A law firm is seeking a highly qualified Patent Prosecution Agent to join its Intellectual Property (IP) practice in New York City, NY. This role involves preparing and prosecuting patent applications, managing intellectual property portfolios, and providing strategic IP guidance for clients in the life sciences or medical fields. The ideal candidate will have a Ph.D.-level background in life sciences or medicine, 2-20 years of relevant experience, and exceptional writing and analytical skills. USPTO registration is required. The position offers a competitive compensation package, including bonuses, health benefits, and retirement contributions.

Key Responsibilities

• Patent Preparation & Prosecution
  • Draft, file, and prosecute patent applications for inventions in the life sciences and medical fields.
  • Manage patent prosecution before the United States Patent and Trademark Office (USPTO), including drafting responses to office actions and conducting examiner interviews.
  • Collaborate closely with inventors and clients to develop patent applications that accurately capture and protect innovations.
  • Handle both domestic and international patent prosecution, coordinating with foreign counsel when needed.
• IP Strategy & Portfolio Management
  • Develop and implement IP strategies for clients to ensure comprehensive protection of their life sciences or medical technologies.
  • Manage and optimize patent portfolios, providing strategic advice on maintaining and expanding intellectual property assets.
  • Conduct patentability, freedom-to-operate, and due diligence analyses for potential patent acquisitions or licensing opportunities.
  • Advise clients on strategic decisions related to intellectual property, risk management, and competitive positioning.
• Client Communication & Relationship Management
  • Maintain open communication with clients, providing regular updates on the status of patent applications and portfolio management.
  • Offer expert guidance on complex intellectual property matters, ensuring that clients understand their options, risks, and opportunities.
  • Build strong, long-term relationships with clients by delivering high-quality IP services and personalized legal advice.
• Legal Research & Documentation
  • Stay up to date on emerging trends and developments in patent law, particularly as they relate to life sciences and medical technology.
  • Conduct legal research and analysis to support patent prosecution efforts and IP strategy development.
  • Prepare and review legal documents such as patent applications, office action responses, opinion letters, and other IP-related correspondence.

Required Qualifications

• Education
  • Ph.D. in Life Sciences, Biology, Biochemistry, Medicine, or a related field.
  • Strong academic credentials demonstrating in-depth knowledge of life sciences or medical technologies.
• Certifications & Licenses
  • USPTO Registration is required.
  • Admission to a state bar (preferred but not mandatory).
• Experience
  • 2-20 years of experience in patent preparation and prosecution, particularly in the life sciences or medical sectors.
  • Proven experience in managing intellectual property portfolios and providing strategic IP counsel.
  • Experience working directly with clients and providing advice on complex patent matters.
• Skills & Competencies
  • Outstanding writing and analytical skills, with demonstrated success in drafting and prosecuting patent applications.
  • Strong communication and interpersonal skills to interact effectively with clients, inventors, and team members.
  • Ability to manage multiple projects and meet deadlines in a fast-paced environment.
  • Excellent organizational skills and attention to detail, with the ability to handle complex cases both independently and as part of a team.
  • Proficiency in patent research tools and databases, with a focus on life sciences and medical innovations.

Benefits

• Compensation & Incentives
  • Competitive salary with a discretionary performance-based bonus.
  • Overtime compensation as applicable.
• Health & Welfare
  • Comprehensive health, dental, and vision insurance.
• Retirement & Financial Security
  • Firm contributions to retirement plans, including 401(k) options.
• Paid Time Off (PTO) & Holidays
  • Paid holidays and a generous PTO policy to support work-life balance.