Patent Agent

A law firm in Washington D.C. is seeking a highly qualified Patent Agent responsible for interfacing with clients and prosecuting patent applications in the United States while coordinating worldwide patent prosecution on behalf of clients. The role involves various patent-related responsibilities, including preparing, filing, and prosecuting patent applications before the US Patent and Trademark Office. The Patent Agent will also conduct prior art searches and analysis, patentability assessments, IP due diligence, and engage in practice development activities to build and maintain client relationships. An advanced degree (Master's or Ph.D.) in chemistry or another biological field is preferred, with a strong emphasis on molecular biology, cell biology, and biochemistry. The ideal candidate should have at least 1 year of experience as a practicing patent agent in the life sciences field, be registered to practice before the U.S. Patent and Trademark Office, and possess excellent writing and research abilities, as well as proficiency in written and verbal communication and strong organizational skills.

Duties:

• Interact with clients and manage patent applications in the United States.
• Coordinate worldwide patent prosecution on behalf of clients.
• Prepare, file, and prosecute patent applications before the US Patent and Trademark Office.
• Conduct prior art searches and analyses.
• Perform patentability assessments.
• Engage in IP due diligence.
• Participate in practice development activities to establish and maintain client relationships.
• Prepare substantive client correspondence.
• Instruct local counsel for foreign filings and Office Actions.
• Assist in patent clearance studies and other patent-related opinion projects.
• Apply advanced concepts in any life sciences field, with a focus on molecular biology, cell biology, and biochemistry.
• Study and analyze scientific or technical documents, including previously published patent documents, to evaluate patentability, novelty, and inventiveness.
• Convert prior provisional applications into utility applications.
• Convert foreign filed applications into US applications.
• Convert US applications into foreign applications.

Requirements:

• An advanced degree (Master's or Ph.D.) in chemistry preferred, or another biological field, including, for example, biochemistry, molecular biology, cell biology, microbiology, or biomedical engineering with excellent academic credentials.
• At least 1 year of experience as a practicing patent agent in the field of life sciences.
• Registered to practice before the U.S. Patent and Trademark Office.
• Excellent writing and research abilities.
• Proficiency in written and verbal communication.
• Strong organizational skills.

Certifications:

• Registered to practice before the U.S. Patent and Trademark Office.

One of DC's most powerful firms is this one. Truly an international giant in every sense of the word, business and finance, M&A, labor law and litigation reign supreme here although the IP practice is coming into its own also. Like many other large firms attrition is high at times, but overall the associates here are well-credentialed and well paid. In DC, this firm's litigation section, especially with respect to technology and intellectual property disputes, tops the list in terms of prestige. However, this is one of the few firms that virtually guarantees great work and top-notch training, regardless of the practice area.