Patent Agent

Job Overview:

A law firm is seeking an experienced Patent Agent to provide patent prosecution services in the software and electronics IP fields across various industries. The ideal candidate will have strong software and electronics expertise, with added health and medicine experience considered a plus. This role requires a combination of technical proficiency, legal expertise, and a client-focused approach to delivering strategic patent prosecution services.

Key Responsibilities:

• Draft, file, and prosecute U.S. and foreign patent applications in software, electronics, and related technologies.
• Manage patent portfolios for clients, ensuring strategic alignment with their business goals.
• Conduct patentability, validity, infringement, and freedom-to-operate analyses.
• Communicate effectively with clients to understand their inventions and provide guidance on the patent process.
• Collaborate with attorneys and technical experts to prepare detailed technical specifications for patent filings.
• Respond to office actions from the USPTO and foreign patent offices.
• Stay updated on changes in patent law, particularly within software and electronics fields.
• Assist in conducting due diligence for IP transactions, including mergers, acquisitions, and licensing agreements.
• Provide support in patent litigation and infringement matters as needed.

Required Qualifications:

• Minimum of 2 years of experience in patent prosecution.
• Ideal associate candidates will have 2 - 5 years of experience.
• Bachelor's degree in computer science, computer engineering, electrical engineering, or a related technical field.
• Familiarity with U.S. and foreign patent prosecution processes.
• Registration with the United States Patent and Trademark Office (USPTO).
• Prior law firm experience in a patent prosecution role.
• Industry experience in software or electronics; experience in health and medicine is a plus.
• Knowledge of patent litigation is beneficial.

Education & Certifications:

• Bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent technical discipline.
• USPTO registration is required.

Desired Skills:

• Superior organizational skills with the ability to manage multiple tasks and deadlines.
• Strong written and verbal communication skills.
• A creative and strategic approach to patent prosecution.
• Ability to work both independently and collaboratively in a fast-paced environment.
• Strong attention to detail and problem-solving skills.
• Client-focused mindset with a demonstrated commitment to exceptional service.

Location:

• Boston, MA

As one of the largest law firms in the U.S. with more than 40 offices, it was founded in 1967. This full-service firm provides legal representation in banking and finance, blockchain, corporate, cybersecurity, energy, entertainment, environmental, food, gaming, health care, real estate, tax, hospitality, and others. This innovative law firm creates creative and efficient strategies that enable to improve predictability, provide better insights, and deliver more value. The firm is committed to diversity and appreciates all backgrounds. Having a collaborative environment, the attorneys and staff have achieved significant results in the legal community. The firm provides new associates with high-level training in client management, business development, collaboration, and cultural skills. Offering unique professional opportunities, the firm empowers attorneys at all levels to shape their paths to success. The firm has developed a strong commitment to giving back to the community and strives to make a difference by leading, volunteering, and donating to a wide range of causes. The firm has numerous recognition awards and awards for its philanthropic giving, diversity, and innovation.