Patent Prosecution

3 weeks ago

San Francisco, United States Fute IT Inc Full time
Job DescriptionJob Description

Job Summary:

Client is a corporate practice offers a blend of comprehensive legal expertise and practical business counselling that enables our clients to clarify goals, find solutions, and achieve results across varied business transactions. Our corporate attorneys advise clients on a wide variety of issues affecting commercial, financial, and industrial enterprises, both publicly and privately owned.

Responsibilities:

  • Client is seeking a patent agent with an advanced degree in medicinal or organic chemistry to join our IP Prosecution team. Patent agents work under the supervision and guidance of partners in our IP section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, freedom to operate analysis, and due diligence work. San Francisco is the preferred office location.
  • Assess scientific literature, patents, and patent application documents, each encompassing a variety of chemical subjects, including organic, synthetic, and medicinal chemistry, as well as material science
  • Understand, critique and provide insightful opinion on scientific data relating to inventions
  • Conduct a comprehensive search for scientific articles, patents, and patent application documents relevant to the subject of an invention
  • Perform in-depth analysis comparing an invention with existing discoveries or inventions. Identify essential elements, features, or components of an invention
  • Compose patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention, and a set of claims clearly and distinctly defining the invention
  • Draft responses to rejection of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, providing detailed analysis of the scientific or patent references cited in the rejection, assessing the difference between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent
  • Present ideas, reasoning, and conclusions in a concise way to colleagues. Provide insightful feedback and arguments to colleagues on their ideas
  • Work with clients on innovative and cutting-edge technologies to procure patent protection and build IP portfolios

Qualifications:

  • USPTO admission required
  • Ph.D. degree in Organic or Medicinal Chemistry, or minimum of 3-years of post-baccalaureate laboratory research experience
  • Two years or more of patent prosecution experience
  • Ability to present scientific concepts, analysis, reasoning and conclusions to scientists and non-scientists
  • Ability to prioritize competing responsibilities, stay organized and exercise attention to detail
  • Ability to collaborate and work effectively in team settings

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