Recruiter

Boston, MA, United States

Patent Resource Attorney

Attorney

4-20 yrs required

Full-time

No

A law firm based in Boston, MA is seeking a highly experienced and technically proficient Patent Resource Attorney to join their team. The successful candidate will provide critical support in patent-related procedures, best practices, and diligence reviews. This role involves addressing procedural issues, supporting patent-related trainings, and communicating relevant legal developments to the team. The ideal candidate will bring substantial experience in patent law and a strong technical background to optimize systems and refine processes.

Key Duties and Responsibilities:

• Address procedural and best practices issues related to patent prosecution, including comprehensive diligence reviews.
• Support patent-related training sessions and communicate relevant regulatory and legal developments to the Patent Prosecution Practice Group.
• Conduct research on procedural questions for US, PCT, and foreign patent prosecution; advise on the application of patent rules both proactively and upon request.
• Participate in Patent Prosecution Practice Group Committee meetings, such as Best Practices, and serve as the point person for action items.
• Conduct diligence reviews of intellectual property portfolios, including patents, trademarks, and copyrights.
• Calculate Patent Term Adjustment (PTA) and confirm expiration dates for . patents.
• Review and revise documents such as PTA requests and retroactive foreign filing license petitions.
• Coordinate and conduct Patents 101 overview/orientation for new legal hires, as well as ongoing training and refresher sessions.
• Utilize knowledge of the Manual of Patent Examining Procedure (MPEP) to search for guidance on responses to office action rejections.
• Monitor rule changes and notifications from the USPTO, PCT, and foreign jurisdictions; prepare updates and notifications as necessary with the Best Practices Committee.
• Assist with Power of Attorneys and other requirements for patent transfers.
• Follow up with USPTO/WIPO and foreign patent offices regarding non-compliant communications, such as erroneous abandonments or incorrect notices.

Requirements:

• 8+ years of experience in patent law, including substantial experience in patent prosecution.
• Juris Doctor (JD) degree from an accredited law school.
• Registration with the USPTO as a patent attorney is strongly preferred.
• Strong analytical and research skills with a solid understanding of patent law procedures.
• Superior written and verbal communication skills.
• Ability to manage multiple projects simultaneously and meet deadlines effectively.
• Proficiency in using patent databases and legal research tools.

Skills:

• Expertise in patent prosecution procedures and best practices.
• Ability to conduct thorough diligence reviews and provide informed guidance.
• Strong technical background to assist with patent formalities, error follow-ups, and patent transfers.
• Excellent organizational skills with the capability to manage and prioritize multiple tasks.
• Proficient in utilizing MPEP and other patent-related resources for effective problem-solving.
• Experience in coordinating and conducting training sessions and information updates.

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