PATENT PROSECUTION AGENT
Company: BCG Attorney Search
Location: San Diego
Posted on: October 19, 2024
Job Description:
A law firm is seeking a highly qualified Patent Prosecution
Agent to join its Intellectual Property (IP) practice in San Diego,
CA. The successful candidate will be responsible for preparing and
prosecuting patent applications, advising clients on IP strategy,
and managing patent portfolios. This position requires a
Ph.D.-level background in life sciences or medicine, with
outstanding writing and analytical skills. The ideal candidate will
have 2-20 years of experience in patent prosecution and be
registered with the United States Patent and Trademark Office
(USPTO). The role offers a competitive compensation package with
benefits and growth opportunities in a dynamic, fast-paced
environment.
The following information provides an overview of the skills,
qualities, and qualifications needed for this role.
Key Responsibilities
- Draft and file patent applications in the life sciences and
medical fields.
- Prosecute patent applications before the USPTO, including
responding to office actions and handling appeals.
- Conduct interviews with patent examiners to advocate for claim
allowance.
- Manage and oversee domestic and international patent
prosecution, coordinating with foreign counsel when needed.
- Provide strategic counsel on patent portfolio development and
management for clients in the life sciences or medical
sectors.
- Develop IP strategies to protect clients' innovations and align
with their business objectives.
- Conduct thorough patentability and freedom-to-operate analyses
for client technologies.
- Monitor IP portfolios to identify and protect commercially
significant innovations.
- Client Communication & Support
- Communicate effectively with clients to provide updates on
patent application progress and IP strategies.
- Build and maintain strong client relationships, understanding
their technical and business needs.
- Offer expert advice on managing and optimizing intellectual
property assets to enhance value.
- Legal Research & Documentation
- Research emerging developments in patent law, especially as
they pertain to life sciences and medical innovations.
- Prepare legal documentation, including opinion letters, patent
claims, and responses to the USPTO.
- Ensure that all documentation complies with relevant legal
standards and firm policies.Required Qualifications
- Education
- Ph.D. in Life Sciences, Biology, Biochemistry, Medicine, or a
closely related field.
- Top-tier academic credentials with in-depth knowledge of
biological and medical technologies.
- Certifications & Licenses
- USPTO Registration is required.
- Bar admission (optional but preferred).
- Experience
- 2-20 years of experience in preparing and prosecuting patent
applications, with a focus on life sciences and medical
technologies.
- Proven experience managing patent portfolios and providing
strategic IP counsel to clients.
- Demonstrated success in handling complex IP matters
independently or in collaboration with attorneys.
- Outstanding writing and analytical skills for drafting detailed
and effective patent applications.
- Strong attention to detail and the ability to handle multiple
projects in a fast-paced environment.
- Excellent communication and interpersonal skills for building
client relationships and collaborating with colleagues.
- Ability to work both independently and as part of a team to
deliver high-quality legal services.
- Proficiency in conducting patent-related research and using
patent databases.
- Compensation & Incentives
- Competitive salary with a discretionary bonus based on
performance.
- Overtime pay, as applicable.
- Comprehensive health, dental, and vision insurance.
- Firm contributions to retirement plans, including 401(k)
options.
- Work-Life Balance
- Paid holidays and generous Paid Time Off (PTO) policies to
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Keywords: BCG Attorney Search, Tustin , PATENT PROSECUTION AGENT, Sales , San Diego, California
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