Patent Agent - Technology at Morgan Lewis

Morgan Lewis


Mid Level

Washington, DC, USA

Not defined

10 Nov → 10 Dec

Job Description

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 the partners in the practice group for whom this individual provides support.

This position will reside in the Washington, DC 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.

The Intellectual Property Practice Group has a law school tuition reimbursement program to provide financial assistance to eligible employees in the practice group who are enrolled in and satisfactorily complete courses of study toward being awarded a Juris Doctorate degree from accredited law schools.


Job Responsibilities

  • 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.

Requirements / Qualifications

  • A bachelor’s degree (or graduate degree) in computer science, software engineering, electrical engineering or degree in a related area.

  • Experience drafting patent applications and patent prosecution or experience examining patent applications at the U.S. Patent and Trademark Office preferred, but no necessary.

  • 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.

  • You must be fully vaccinated against COVID-19 by your hire date to be eligible for starting in the role. Proof of vaccination will be required. Morgan Lewis will provide reasonable accommodation(s) based on medical or religious grounds for qualified candidates.

How To Apply

Apply through LegalJobs.

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