Patent Agent or Technical Advisor (Chemistry)

REQUIREMENTS

• Prior patent prosecution experience
• Bachelor’s degree in chemistry, organic chemistry, medicinal chemistry, biochemistry, or chemical engineering preferred with relevant research experience;

or Master’s or PhD in a related chemistry field.

• Qualified to sit for the patent bar; preferably already licensed to practice before USPTO.
• Excellent academic credentials
• Ability to analyze, interpret, and draw inferences from research findings, and prepare reports. Strong investigative and problem resolution skills.
• Knowledge of principles, procedures, and standards for drafting a range of complex patent documentation in area of expertise.

Knowledge of current and emerging developments and trends within area of expertise.

• Advanced working knowledge of research principles, methods, techniques, and resources.
• Strong interpersonal skills; ability to work effectively with a wide range of individuals.
• Ability to organize and prioritize numerous tasks and complete them under time constraints.
• Advanced oral and written communication skills.
• Ability to effectively communicate complex factual, technical information.
• Knowledge of and use of time management software. Knowledge of Outlook, Word, and Excel programs.
• Familiarity with prosecution docketing systems.
• Ability to understand and comply with confidentiality issues and ethical responsibilities.

RESPONSIBILITIES

The primary responsibilities of this position include preparing draft patent applications, drafting responses to communications from the USPTO, assisting in diligence matters (clearance studies and opinion work), and supporting technical aspects of litigation where needed.

This role assists attorneys in the delivery of quality legal services to clients in an efficient and cost-effective manner.

Additional responsibilities include :

• Undertake continuing education and remain abreast of current patent prosecution issues and trends, as required to maintain appropriate accreditation in the field.
• Evaluate and report on the technological aspects of inventions and other scientific matters. Investigate general and specific technologies as needed.

Discuss scientific aspects of inventions with clients and inventors.

• Identify and analyze complex patent issues and problems and implement solutions.
• Communicate with, and act as liaison between, inventors and Patent & Trademark Office in connection with all aspects of patent application process.
• Communicate face-to-face, e-mail and telephone with staff, clients, and PTO personnel.
• Interact professionally with clients, lawyers, and employees at all levels and provide information with ordinary courtesy and tact while safeguarding confidentiality.
• Organize and prioritize numerous tasks and complete them under time constraints in an efficient and cost-effective manner.
• Stay abreast of technology trends and make recommendations regarding technology needs.
• Additional hours will be required when necessary to meet established deadlines or stay current with occasional peaks in workload.

Flexibility in working overtime evenings and weekends as required by assigned or overflow work.

This role may be hybrid and will require a minimum of three days per week (or at least 60%) present in the office, and up to two days per week (40%) may be performed remotely.

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