Description:

Location: We welcome fully remote anywhere in US and/or hybrid patent attorneys interested in utilizing our office in New York City. The candidate will be primarily responsible for, but not limited to, preparing and prosecuting patent and trademark applications before the United States Patent and Trademark Office (USPTO), conducting invention intake with clients and prospective clients, conducting patentability and clearance searches, and preparing related memoranda and opinions.

At Intellectual Property & Transactional Law Firm, you will have the opportunity for ample client interaction. Our current client portfolio is well distributed and includes a wide-ranging variety of small and large clients. This is interesting work with a talented collection of peers with flexible work hours, an origination incentive program, and more. Your duties will be related to your technical training and/or prior legal experience. Although, present needs concern the drafting and prosecution of patents, there is also a great likelihood of work in other related areas. For example, in addition to patent prosecution, you may contribute to portfolio counseling; infringement, invalidity, and freedom to operate opinions; due diligence.

Responsibilities:
  • Prepare and prosecute patent and trademark applications before the United States Patent and Trademark Office (USPTO).
  • Draft and submit Office Action responses and correspond with Examiners.
  • Draft and submit patent applications.
  • Conduct diligence review and assist in management of IP portfolios.
  • Conduct invention intake with clients and prospective clients.
  • Conduct patentability and clearance searches.
  • Prepare related memoranda and opinions.
  • Act on behalf of the clients' best interest.
  • Aid senior attorneys and teams in filing paperwork on time.
  • Advise clients on their patent rights.
  • Use exceptional communication and analytical skills to learn about clients' inventions.
  • Understand technical concepts.
  • Keep up with advancements in your field.
  • Demonstrate effective communication with clients and internal teams.
  • Collaborate with legal professionals to provide comprehensive patent services.
  • Complete all other tasks and projects as assigned.

Qualifications:
  • Registration to practice before the USPTO or eligible to sit for the (USPTO) Registration Examination
  • Bachelor's Degree (or graduate degree) in: Engineering, Science, Technology or a related field
  • For attorney applicants, member in good standing of at least one state bar. Preferred New York, California, and Texas.
  • 1-3 years of patent prosecution experience
  • Any prior engineering experience would also be valued
  • Demonstrated experience in both patent preparation and prosecution and trademark matters
  • Outstanding English writing and communication skills
  • Ability to independently organize and prioritize tasks with deadlines
  • Ability to professionally interface with clients and respond to questions