Patent Agent - Technology

Job Overview:
A prominent global law firm is seeking a Patent Agent to join its award-winning Intellectual Property Practice Group. This role will be responsible for preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office (USPTO). The ideal candidate will bring expertise in electrical engineering or a related field, with significant experience in patent prosecution, particularly in areas such as display and battery technology. The position offers a hybrid in-office/remote work schedule and will be supervised by an intellectual property partner, with daily interaction with the firm's partners.

Location:

• Washington, D.C. office

Duties:

• Perform patent searching and investigate inventorship issues
• Review invention disclosures for patentability, novelty, and non-obviousness
• Evaluate the applicability of prior art to patent claims
• Draft new patent applications and manage the processing of filings
• Convert provisional applications into utility applications, foreign applications into U.S. applications, and U.S. applications into foreign applications
• Prepare responses to U.S. and foreign office actions
• Assist attorneys with patent prosecution, including identifying alternative prosecution strategies
• Conduct interviews with USPTO examiners and prepare appeals to the PTAB
• Prepare reexamination petitions, reissue applications, and IPR and CBM petitions
• Prepare substantive client correspondence and meet with clients to discuss inventions
• Provide patent prosecution training and guidance

Requirements:

• Education and Experience:

  • Bachelor’s or graduate degree, preferably in electrical engineering, computer science, software engineering, or a related field
  • Minimum of 2 years of experience in prosecuting or examining patent applications, with a focus on electrical arts (display and battery technology is preferred)
  • Registered to practice before the USPTO or eligible to sit for the USPTO patent agent exam
  • Excellent writing, research, and communication skills
  • Strong organizational skills

• Skills:

  • Expertise in patent prosecution and prior art searching
  • Ability to draft patent applications and manage filings efficiently
  • Familiarity with the patent examination process and office action responses
  • Ability to work independently and collaborate with senior attorneys
  • Strong verbal and written communication skills

Benefits:

• Hybrid in-office/remote work schedule
• Medical, Dental, Vision, Life, and Disability insurance
• Flexible Spending Plan and Health Savings Account
• Fertility assistance, Adoption, and Surrogacy financial support
• Paid time off (holidays, vacation, sick leave, parental leave)
• Profit-Sharing and 401(k) retirement benefits
• Discretionary bonuses and employee assistance program
• Technology allowance and domestic partner benefits

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.