Patent Prosecution Agent

A law firm is seeking a highly skilled Patent Prosecution Agent to join its Intellectual Property (IP) team in Palo Alto, CA. This position involves preparing and prosecuting patent applications, managing intellectual property portfolios, and providing strategic IP advice. The ideal candidate will have a Ph.D.-level background in life sciences or medicine, along with 2-20 years of relevant experience. Candidates must possess outstanding writing and analytical skills, as well as top academic credentials. A USPTO registration is required. This role offers a competitive compensation package, including bonuses and benefits.

Key Responsibilities

• Patent Preparation & Prosecution
  • Prepare, file, and prosecute patent applications in the life sciences and medical fields.
  • Handle all aspects of patent prosecution before the United States Patent and Trademark Office (USPTO), including drafting responses to office actions.
  • Collaborate with inventors and clients to ensure accurate representation of innovations in patent filings.
  • Participate in patent examiner interviews and appeals to advocate for claim allowances.
• IP Strategy & Portfolio Management
  • Develop and implement intellectual property strategies tailored to clients' business objectives, particularly in life sciences and medical industries.
  • Manage and optimize patent portfolios to protect critical technologies and innovations.
  • Conduct patentability assessments, freedom-to-operate analysis, and due diligence for potential patent acquisitions or licensing.
  • Advise clients on strategic decisions related to IP investments and competitive positioning.
• Client Communication & Relationship Management
  • Maintain regular communication with clients, providing updates on patent applications and strategies.
  • Offer expert counsel on intellectual property matters, ensuring clients understand their IP options and potential risks.
  • Build strong, long-term client relationships by delivering high-quality legal services and IP advice.
• Legal Research & Documentation
  • Stay current on the latest developments in patent law, especially as they pertain to life sciences and medical technologies.
  • Conduct legal research to support patent prosecution efforts and assess evolving IP trends.
  • Draft and review legal documents, including patent applications, responses to USPTO actions, and opinion letters.

Required Qualifications

• Education
  • Ph.D. in Life Sciences, Biology, Biochemistry, Medicine, or a related field is required.
  • Top academic credentials from a recognized institution, demonstrating strong understanding of life sciences technologies.
• Certifications & Licenses
  • USPTO Registration is mandatory.
  • Admission to a state bar (preferred but not required).
• Experience
  • 2-20 years of experience in patent prosecution, with a focus on life sciences or medical technologies.
  • Proven track record of success in managing complex patent portfolios and IP strategies.
  • Experience working directly with clients and providing tailored legal advice on patent matters.
• Skills & Competencies
  • Exceptional writing and analytical skills, particularly in drafting patent applications and responses to USPTO actions.
  • Strong interpersonal and communication skills for interacting with clients, inventors, and internal team members.
  • Ability to manage multiple tasks and meet tight deadlines in a fast-paced legal environment.
  • Detail-oriented with excellent organizational skills and the ability to work both independently and collaboratively.
  • Proficient in patent-related research and use of patent databases.

Benefits

• Compensation & Bonus
  • Competitive salary with a discretionary performance-based bonus.
  • Overtime compensation as applicable.
• Health & Welfare
  • Comprehensive health benefits, including medical, dental, and vision coverage.
• Retirement
  • 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.

Since three decades ago, this law firm has provided exceptional legal advice. Their areas of practice include intellectual property, regulatory, tax, international, business, and finance. their offices are located in California, DC, Colorado, and Virginia.