Patent Agent

Patent Agent

locations

Washington, District of Columbia

time type

Full time

 

This position will reside in the Washington, D.C office and offers a hybrid in-office/remote working schedule. This position will be 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 Patent Agent will work 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.

 

Responsibilities:

• Perform patent searching and 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
• 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

 

Education & experience:

• Bachelor’s (or Graduate) degree, preferably in electrical engineering
• Fluency in Japanese, strongly preferred
• Minimum 1 year of directly relevant experience
• Registered to practice before the U.S. Patent and Trademark Office or eligible to sit for the USPTO patent agent exam
• Knowledge of Japanese patent practices, preferred.
• Excellent writing and research abilities are a must, as well as proficiency in written and verbal communication, and strong organizational skills

 

The Intellectual Property Practice Group has a law school tuition reimbursement program to provide financial assistance to eligible employees who apply for and are accepted into the Law School Tuition Reimbursement Program.  In order to be eligible for the financial benefits, enrollees must meet all requirements of the program, including, e.g., enrollment and satisfactory completion of courses towards a Juris Doctorate degree from an accredited law school.

 

Qualified candidates must apply online by visiting our website at www.morganlewis.com and selecting “Careers.”

 

#LI-Hybrid

 

For positions in Washington, D.C., the salary range for this position is: $114,200 - $182,750.00.