Patent Agent - Technology

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Patent Agent - Technology

Apply locations Washington, District of Columbia posted on Posted 4 Days Ago job requisition id R3310

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is seeking to hire a Patent Agent to join their award-winning Intellectual Property Practice Group and be responsible for preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office (“USPTO”).

This position will reside in the Washington, D.C office and offers a hybrid in-office/remote working schedule. This position will be supervised by an intellectual property partner, but will have daily contact with, and will receive guidance from, all the partners in the practice group for whom this individual provides support. The Patent Agent will work 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.

Responsibilities:

• Perform patent searching and 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
• 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

Education & experience:

• Bachelor’s degree (or graduate degree) preferably in electrical engineering, but a degree in computer science, software engineering, or a related area will be considered
• Minimum 2 years of experience prosecuting or examining patent applications in the electrical arts, preferably display and battery technology
• Registered to practice before the U.S. Patent and Trademark Office or eligible to sit for the USPTO patent agent exam
• Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills

The Intellectual Property Practice Group has a law school tuition reimbursement program to provide financial assistance to eligible employees who apply for and are accepted into the Law School Tuition Reimbursement Program. In order to be eligible for the financial benefits, enrollees must meet all requirements of the program, including, e.g., enrollment and satisfactory completion of courses towards a Juris Doctorate degree from an accredited law school.

Qualified candidates must apply online by visiting our website at and selecting “Careers.”

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For positions in Washington, D.C., the salary range for this position is: $114,200 - $182,750.00.

The base salary or hourly wage range for this position will be determined during the interview process and will vary based on multiple factors, including but not limited to prior experience, relevant expertise, current business needs, and market factors. The final salary or hourly wages offered may be outside of this range based on other reasons and individual circumstances. Additionally, salary or hourly wages may be only part of the total compensation package. The total compensation package for this position may also include a full range of medical, financial, and/or other benefits (including 401(k) eligibility and various paid time off benefits, such as vacation, sick time, and parental leave), dependent on the position offered. Details of participation in these benefit plans will be provided if an employee receives an offer of employment. If hired, the employee will be in an "at-will position" and the firm reserves the right to modify base salary (as well as any other discretionary