Patent Prosecution & Litigation Associate Electrical Engineering & Software

A law firm seeks a skilled Patent Prosecution & Litigation Associate to join its team in Houston, Texas, specializing in electrical engineering and software technologies. The ideal candidate will have a strong technical background, with a focus on intellectual property law, patent prosecution, and litigation. This role offers the opportunity to work with a diverse range of clients, manage global IP portfolios, and contribute to strategic decision-making in cutting-edge technological sectors.

Duties:

• Manage the full spectrum of patent prosecution for electrical engineering and software technologies, including preparing and filing patent applications.
• Advise clients on global patent portfolio strategy, including filing patents in the U.S. and abroad.
• Conduct patentability assessments, draft office action responses, and manage patent office interactions.
• Provide technical expertise to support patent litigation and enforcement efforts.
• Work closely with cross-functional teams to develop IP strategies that align with client business goals.
• Assist with intellectual property due diligence, licensing, and IP transactions.
• Stay current with industry developments, particularly in software, controls, and electro-mechanical systems.
• Communicate complex technical information to clients and colleagues in an accessible manner.
• Take initiative in expanding knowledge and capabilities in other areas of intellectual property protection.

Requirements:

• A minimum of 4 years of experience in patent prosecution and litigation.
• A background in electrical engineering, computer science, or a related technical field; advanced degrees or prior work experience in these areas are strongly preferred.
• Deep knowledge of software, control systems, and related technologies.
• Experience with electro-mechanical systems is a plus.
• Must be registered with the USPTO.
• Licensed to practice law in Texas, or eligible for immediate licensure.
• Strong written and verbal communication skills, with the ability to articulate complex concepts clearly.
• Excellent organizational and analytical skills, with the ability to prioritize and manage multiple tasks efficiently.

Education:

• A Bachelor’s or advanced degree in Electrical Engineering, Computer Science, or a related technical field is required.

Certifications:

• USPTO registration is required.
• Admission to practice law in Texas or eligibility to obtain licensure is necessary.

Skills:

• Proficiency in patent prosecution, including drafting applications, managing portfolios, and responding to office actions.
• Technical expertise in electrical engineering, software development, and control systems.
• Knowledge of patent litigation procedures and IP enforcement strategies.
• Ability to effectively communicate with clients and internal teams on complex technical and legal matters.
• Strong research skills, including conducting patent searches and assessing prior art.
• Ability to manage multiple projects simultaneously while meeting deadlines.
• Familiarity with various intellectual property protections, including trademarks and trade secrets.

Benefits:

• Comprehensive medical, dental, and vision coverage.
• 401(k) retirement plan with employer contributions.
• Paid time off and holiday leave.
• Opportunities for professional development and career advancement.
• A collaborative and inclusive work environment that values diversity and innovation.

Focusing on delivering practical advice across the Atlantic, this firm brings an international perspective and extended jurisdictional reach to a wide range of client needs. The firm invests in its own employees to ensure to deliver high quality, cost-effective and personal service. The lawyers actively contribute time and energy to pro bono and community service projects, both through the firm and individually.