Patent Agent

Practice Areas: Patent Prosecution Exp.: 2 - 3 Years
We are looking for a Patent Agent with an advanced degree in Molecular Biology, Genetics,Immunology, or related biological science tojoin our San Diego office. Ideal candidates will have 2-3 years of patent prosecution experience.

Patent Agents work under the supervision and guidance of senior associatesand partners in our Intellectual Property section and perform a variety ofpatent-related activities, primarily in the areas of patent prosecution,opinion drafting, freedom to operate analysis, and due diligence work. Specificduties include:
  • Assess scientific literature, patents and patent applicationdocuments, each encompassing a variety of biology fields, including cellbiology, cancer biology, immunology, genetics, and molecular biology, andpossibly materials science and multiple chemistry areas, including organic,synthetic, and physical chemistry. Understand, critique and provide insightfulopinion on scientific data relating to inventions.
  • Conduct comprehensive search for scientific articles, patentsand patent application documents relevant to subject of an invention.
  • Perform in-depth analysis comparing an invention with existingdiscoveries or inventions.
  • Identify essential elements, features or components of aninvention.
  • Compose patent applications comprising a comprehensivebackground of the field of an invention, a description of critical features andcomponents of the invention, and a set of claims clearly and distinctlydefining the invention.
  • Draft responses to rejection of a patent application for aninvention from the United States Patent and Trademark Office and otherworldwide Patent Offices, providing detailed analysis of the scientific orpatent references cited in the rejection, assessing the difference between theinvention and the citations, and presenting convincing arguments and reasoningwhy the patent application is to be allowed as a patent.
  • Collaborate with colleagues on various projects; adapteffectively in different team environments; present ideas, reasoning andconclusions in a concise way to colleagues; provide insightful feedback andarguments to colleagues on their ideas.
  • Work with clients in prosecuting patent applications;formulate and ask clients questions essential to clarifying the distinctfeatures or properties of the invention; investigate and respond promptly toclients' inquiries about the prosecution of patent applications.

  • Ph.D. degree in Molecular Biology, Genetics, Immunology, or related biologicalscience.
  • Demonstrated knowledge in the following scientific fields:biology, cell biology, cancer biology, immunology,genetics, and molecular biology.
  • Demonstrated skills verbally presenting scientific concepts, terms, anddiscoveries to wide audiences, including scientists and non-scientists.
  • Demonstrated scientific writing ability using proper grammarand vocabulary which also includes the following skills: analyzing and explainingabstract scientific concepts and terms synthesizing a large amount ofscientific or technological literature into a systematic and concisedescription of the state of the art; anddifferentiating and describing important differences among related scientificdiscoveries or technological breakthroughs.

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