Patent Agent - Technology at Morgan, Lewis & Bockius LLP

Morgan, Lewis & Bockius LLP

Full-Time

Viale Monastir km 10, 93657 Sestu CA

Not defined

23 Nov → 23 Dec

Job Description

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with more than 4,000 lawyers and staff in 30 offices is seeking a Patent Agent for their award-winning IP Team. This position can reside in either of our Silicon Valley, CA or Orange County, CA office.

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.

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.

A hybrid work opportunity is available for this position.

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.
• Perform other duties as assigned.

Education And Experience
• A bachelor’s degree (or graduate degree) in computer science, software engineering, or electrical engineering. Other STEM degrees will be considered, in combination with experience drafting and prosecution patent applications on computer-implemented inventions.
• At least three (3) years of experience drafting patent applications and patent prosecution.
• Registered to practice before the U.S. Patent and Trademark Office.
• Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills.

COVID-19: Morgan, Lewis & Bockius LLP requires its personnel to be fully vaccinated against COVID-19. Proof of vaccination is required.

Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.

Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.

California Applicants: Pursuant to the California Consumer Privacy Act, the following link contains the Firm's California Consumer Privacy Act Privacy Notice for Candidates which explains the categories of personal information that we collect and the purposes for which we use such personal information. CCPA Privacy Notice for Candidates

Morgan Lewis & Bockius LLP is also an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.

If You Are Interested In Applying For Employment With Morgan Lewis And Need Special Assistance Or An Accommodation To Use Our Website Or To Apply For a Position, Please Call Or Email The Following Contacts
• Professional Staff positions: Please call 888.534.5003 or email [email protected]
• Lawyer/Summer Associate positions: [email protected]

Morgan, Lewis & Bockius, LLP reasonably accommodates applicants and employees who need them to perform the essential functions of the job because of disability, religious belief, or other reason protected by applicable law. If you believe you need a reasonable accommodation during the application process, please contact Karen Queen-LeBoo at [email protected]

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
  • Perform other duties as assigned

Requirements / Qualifications

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

  • Other STEM degrees will be considered, in combination with experience drafting and prosecution patent applications on computer-implemented inventions

  • At least three (3) years of experience drafting patent applications and patent prosecution

  • Registered to practice before the U.S. Patent and Trademark Office

  • Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills

  • COVID-19: Morgan, Lewis & Bockius LLP requires its personnel to be fully vaccinated against COVID-19. Proof of vaccination is required

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