Technical Specialist / Patent Agent - Technology

Job Overview: A leading law firm is seeking a Patent Agent or Technical Specialist for their Intellectual Property Practice Group. This role involves preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office (USPTO). Candidates will work closely with intellectual property partners and have the opportunity to handle significant client responsibilities while delivering high-quality legal services to both domestic and international clients.

Location:

• Houston, Texas

Duties:

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

Requirements:

• Minimum of 2 years of experience prosecuting or examining patent applications, particularly in the electrical arts (preferred experience in display, battery technology, and optics).
• Strong writing and research skills.
• Proficiency in both written and verbal communication.
• Organizational skills and attention to detail.

Education:

• Bachelor’s degree (or higher) in electrical engineering, computer science, physics, computer engineering, or mechanical engineering.

Certifications:

• Registration to practice before the U.S. Patent and Trademark Office (USPTO) or eligibility to sit for the USPTO patent agent exam.

Skills:

• Expertise in applying advanced concepts in life sciences, particularly molecular biology, cell biology, and/or biochemistry.
• Proficiency in patent clearance and conducting patent-related opinion projects.
• Ability to analyze technical documents for patentability and inventiveness.
• Strong interpersonal skills to manage client relationships and collaborate with a team.

Benefits:

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