Legal Staff Technical Specialist (Patent Agent) in Houston, TX

Law Firm

Houston, TX

Legal Staff Technical Specialist (Patent Agent) in Houston, TX

Legal Staff

Min 2 yrs required

No

Law Firm seeking a Patent Agent (Life Sciences) with at least 2 years of experience to join their highly-regarded Intellectual Property team. This position is based in multiple offices, including Austin, Dallas, Houston, New York, or Washington DC. The salary range for positions based in the NYC office is $120,000 to $200,000, depending on experience level. This role may be hybrid, with a minimum of three days per week in the office and up to two days per week remote. The ideal candidate will have a background in biomedical engineering, cell and molecular biology, biochemistry, DNA sequencing, immunology, physics, material science or related medical device or life sciences technology, with advanced degrees preferred. They should also have experience in patent prosecution, as well as some experience in patent portfolio analysis, due diligence or other IP transactional matters. Registration to practice before the . Patent and Trademark Office is required.

Responsibilities:

- Prepare and draft patent applications, incorporating scientific aspects of inventions
- Prepare responses to communications from . and foreign patent offices regarding factual and scientific matters
- Discuss scientific aspects of inventions with clients and inventors, providing attorneys with a report on those discussions
- Act as liaison between inventors and the Patent & Trademark Office throughout the patent application process
- Evaluate and report on the technological aspects of inventions and other scientific matters, advising attorneys as needed
- Draft, organize, analyze, review, and summarize documents
- Review and analyze client and other files
- Conduct regulatory and factual research
- Communicate with staff, clients, vendors, and PTO and agency personnel in person, via email, and by telephone
- Coordinate workflow with outside service providers
- Organize and prioritize tasks efficiently and effectively under time constraints
- Identify and analyze complex patent issues and implement solutions
- Interact professionally with clients, lawyers, and employees at all levels while maintaining confidentiality
- Provide direction and guidance to legal support staff
- Stay updated on technology trends and make recommendations for technology needs
- Undertake continuing education to maintain appropriate accreditation in the field
- Perform other job-related duties as assigned

Requirements:

- Bachelor's degree in life sciences
- Licensed to practice before the United States Patent and Trademark Office preferred
- Strong analytical and research skills
- Ability to provide leadership and guidance to technical staff
- Strong problem-solving skills
- Knowledge of patent drafting principles, procedures, and standards in area of expertise
- Excellent communication skills, both written and oral, for effectively communicating complex factual and technical information
- Familiarity with recordkeeping systems and procedures
- Ability to handle confidential information with discretion
- Strong interpersonal skills and ability to work with a diverse group of individuals
- Advanced oral and written communication skills
- Knowledge of current and emerging developments and trends in the field
- Ability to efficiently organize and prioritize tasks under time constraints
- Familiarity with various software packages
- Familiarity with standard office equipment
- Knowledge of time and project management strategies
- Ability to facilitate individual and group meetings
- Understanding of confidentiality issues and ethical responsibilities
- Willingness to travel locally and out of town for client needs
- Moderate amount of daily contact with partners, associates, paralegals, and office personnel at all levels within the resident office, and moderate amount of contact with these groups in other offices
- Moderate amount of contact with clients, vendor representatives, and agency personnel outside of the firm
- Flexibility to work overtime, including evenings and weekends, when necessary to meet deadlines or handle overflow work

Salary Information:

- Salary range for positions based in NYC office: $120,000 to $200,000, depending on experience level

Education and Experience:

- Bachelor's degree in life sciences
- At least 2 years of experience in patent prosecution, with experience in patent portfolio analysis, due diligence, or other IP transactional matters preferred
- Advanced degrees in related fields preferred
- Registration to practice before the . Patent and Trademark Office required

Essential Duties and Responsibilities:

- Prepare draft patent applications
- Prepare responses to communications from . and foreign patent offices
- Discuss scientific aspects of inventions with clients and inventors
- Act as liaison between inventors and the Patent & Trademark Office
- Evaluate and report on technological aspects of inventions
- Draft, organize, analyze, review, and summarize documents
- Review and analyze client and other files
- Conduct regulatory and factual research
- Communicate with staff, clients, vendors, and PTO and agency personnel
- Coordinate workflow with outside service providers
- Organize and prioritize tasks efficiently and effectively
- Identify and analyze complex patent issues and implement solutions
- Interact professionally with clients, lawyers, and employees at all levels
- Provide direction and guidance to legal support staff
- Stay updated on technology trends and make recommendations for technology needs
- Undertake continuing education to maintain appropriate accreditation in the field
- Perform other job-related duties as assigned

Job Requirements:

- Bachelor's degree in life sciences
- Licensed to practice before the United States Patent and Trademark Office preferred
- Strong analytical and research skills
- Ability to provide leadership and guidance to technical staff
- Strong problem-solving skills
- Knowledge of patent drafting principles, procedures, and standards in area of expertise
- Excellent communication skills, both written and oral, for effectively communicating complex factual and technical information
- Familiarity with recordkeeping systems and procedures
- Ability to handle confidential information with discretion
- Strong interpersonal skills and ability to work with a diverse group of individuals
- Advanced oral and written communication skills
- Knowledge of current and emerging developments and trends in the field
- Ability to efficiently organize and prioritize tasks under time constraints
- Familiarity with various software packages
- Familiarity with standard office equipment
- Knowledge of time and project management strategies