Chemistry Patent Prosecution Patent Agent

A law firm located in San Diego, CA, is seeking a Chemistry Patent Prosecution Patent Agent to join their Intellectual Property (IP) Prosecution team. The ideal candidate will hold an advanced degree in medicinal or organic chemistry and have substantial patent prosecution experience. The role involves assessing scientific literature, conducting patent-related analyses, and drafting patent applications under the guidance of IP partners.

Duties and Responsibilities:

• Assess scientific literature, patents, and patent application documents across a range of chemical subjects, including organic, synthetic, and medicinal chemistry, as well as material science.
• Understand, critique, and provide insightful opinions on scientific data related to inventions.
• Conduct comprehensive searches for scientific articles, patents, and patent application documents relevant to the subject of an invention.
• Perform in-depth analyses comparing inventions with existing discoveries or inventions, and identify essential elements, features, or components.
• Compose patent applications that include a detailed background of the invention field, descriptions of critical features and components, and a set of claims clearly defining the invention.
• Draft responses to patent rejections from the United States Patent and Trademark Office (USPTO) and other international patent offices, including detailed analyses and persuasive arguments.
• Present ideas, reasoning, and conclusions clearly and concisely to colleagues, and provide constructive feedback on their ideas.
• Work with clients on cutting-edge technologies to procure patent protection and build comprehensive IP portfolios.
• Engage in freedom to operate analysis and due diligence work as part of the IP prosecution team.

Requirements:

• Ph.D. degree in Organic or Medicinal Chemistry, or a minimum of 3 years of post-baccalaureate laboratory research experience.
• USPTO admission required.
• 2+ years of patent prosecution experience.
• Ability to present scientific concepts and analyses to both scientific and non-scientific audiences.
• Strong organizational skills with attention to detail and the ability to manage multiple responsibilities effectively.
• Proven ability to collaborate and work effectively within team settings.

Education:

• Ph.D. degree in Organic or Medicinal Chemistry, or equivalent post-baccalaureate laboratory research experience.

Certifications:

• USPTO admission required.

Skills:

• Expertise in assessing scientific literature and patent documents related to chemical subjects.
• Strong analytical skills for comparing inventions with existing discoveries.
• Proficient drafting skills for patent applications and responses.
• Ability to articulate scientific and legal concepts clearly and persuasively.
• Excellent organizational skills with a keen attention to detail.
• Ability to manage competing responsibilities and prioritize tasks effectively.
• Collaborative skills with the ability to work efficiently in team environments.

Built on excellence and driven by change, this AmLaw 100 firm is appealing to associates for its nimble, collaborative legal teams addressing the shifting legal and regulatory requirements of the global market?s most competitive industries. Associates regard the firm as one of the ?heathiest work environments? they have worked in, as well as dealing with interesting work and early responsibility or junior associates. The firm is dedicated to pro bono work, using their program to provide training and guidance for associates. Compensation at this firm is competitive with peer firms in the region.