Primary responsibilities of the position include developing and implementing patent filing strategies, conducting interviews with clients to obtain invention disclosures, preparing patent applications under the supervision of a patent attorney, analyzing office actions and preparing responses under the supervision of a patent attorney, conducting interviews with Patent Office examiners and other patent prosecution-related activity, assisting in formulating and preparing infringement and validity opinions, working on patent post-grant proceedings, assisting in patent and other litigation, and supporting intellectual property licensing and other transactions. Additional duties include writing scientific and technical documents in clear concise English; effectively managing a docket with multiple clients and deadlines; conducting legal and technical research and analysis using all available resources in support of various patent-related matters; working closely with attorneys, other agents, and staff to research the invention and draft the specifications using technical expertise in the field; following the ethical requirements as set forth by the Firm’s professional liability insurer; and performing various other tasks as requested/needed.
Candidate must be patent-bar qualified. Ideal candidate must be a registered patent agent with 2+ years of experience preparing and prosecuting patents. Candidate preferably has experience writing software, ideally in several layers of a software stack, or a degree in electrical engineering, computer science, computer engineering or a related field. Familiarity with applied mathematics, statistics, data science, machine learning, or natural language processing is helpful. Proficiency in written English is required. Successful candidate must have excellent attention to detail, strong interpersonal communication skills, be highly motivated, business-minded, a team player, able to learn new technologies quickly, and have a strong ability to write well. Candidate must be able to effectively manage multiple matters simultaneously with various deadlines and possess the technical and analytical skills necessary to conduct complex and detailed analysis of patent-related matters. Candidate must also possess the interpersonal skills necessary to communicate with a diverse group of attorneys, staff, and clients and provide information with courtesy and tact in person, electronically, and by phone.
Pillsbury Winthrop Shaw Pittman LLP is an Equal Opportunity Employer.
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- Applied Mathematics
- Attention To Detail
- Computer Engineering
- Data Science