- Palo Alto, CA
Morgan, Lewis & Bockius LLP, one of the world's leading global law firms with over 4,000 lawyers and staff in 31 offices is seeking a Patent Agent for their award winning IP Team.
The Patent Agent is supervised by an intellectual property partner, but will have daily contact with, and will receive guidance from, all of the partners in the practice group for whom this individual provides support.
This position will reside in the Silicon Valley, CA or Orange County, CA office and will be responsible for preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office ("USPTO").
This position will contribute to important strategic patent procurement and enforcement decisions, and the Patent Agent will understand the business context of their efforts.
The Patent Agent will work closely with intellectual property practice group partners and attorneys to protect inventions in a manner that is consistent with his/her technical merit, while assuming significant client responsibilities and providing high quality legal services to domestic and foreign clients.
•Perform patent searching.
•Investigate inventorship issues.
•Manage the intake of invention disclosures and review disclosures for patentability, novelty, and non-obviousness.
•Evaluate qualification and applicability of prior art.
•Study and analyze scientific or technical documents, including previously published patent documents, to assess patentability, novelty and inventiveness.
•Draft new patent applications; act as a second reviewer for filings; manage the processing of e-File filings.
•Convert prior provisional applications into utility applications; foreign filed applications into U.S. applications and U.S. applications into foreign applications.
•Prepare replies to U.S. and foreign office actions.
•Assist attorneys with prosecution; identify alternative prosecution scenarios and claim strategies to develop patent portfolios.
•Conduct interviews with USPTO examiners; prepare appeals to PTAB and clearance analyses.
•Prepare reexamination petitions, reissue applications, and IPR and CBM petitions.
•Engage in practice development activities to build and maintain client relationships.
•Prepare substantive client correspondence.
•Meet with clients to discuss inventions and ascertain whether the inventions are likely to lead to commercially meaningful patent claims.
•Provide patent prosecution training.
•Perform other duties as assigned.
EDUCATION AND EXPERIENCE:
•A bachelor's degree in computer science/software engineering degree.
•A bachelor's degree (and preferably an advanced degree).
•At least three (3) years of experience drafting patent applications and patent prosecution.
•Registered to practice before the U.S. Patent and Trademark Office.
•Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills.
Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.
Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.
California Applicants: Pursuant to the California Consumer Privacy Act, the following link contains the Firm's California Consumer Privacy Act Privacy Notice for Candidates which explains the categories of personal information that we collect and the purposes for which we use such personal information. CCPA Privacy Notice for Candidates
Morgan Lewis & Bockius LLP is also an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.
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