Orange County Patent Agent or Patent Technical Specialist

LawyersIntellectual PropertyOrange County

Job Description

At K&L Gates, we are looking for smart, imaginative and hard-working people with diverse backgrounds, experiences and ideas to join us.  Perhaps our search for talented visionaries and your search for important and impactful work lead to the same place.

POSITION SUMMARY
Patent Agents support lawyers with patent prosecution matters and specifically perform tasks including, but not limited to, analyzing invention disclosures, performing patent searches, drafting patent applications, preparing office action responses, and generating other documents in support of patent prosecution matters.  The Patent Agent will at times manage one or more patent portfolios.  From time to time, Patent Agents will also work closely with and under the supervision of lawyers to support patent litigation, perform due diligence, and support other legal activities.

ESSENTIAL DUTIES
• Management of Patent Portfolio and docket, under the supervision of lawyers.
• Drafting patent applications and prosecuting patent applications before the US Patent and Trademark office (USPTO).
• Direct client contact regarding due dates, invention disclosures and other pertinent client projects/tasks.
• Analyzing scientific or technical documents, including previously published patent documents, to assess an invention or issued patent
• Drafting detailed descriptions of inventions in precise legal terms (patent drafts), which form the basis for patents to be granted by patent offices in various parts of the world.
• Preparing information disclosure statements, declarations, and other patent prosecution related materials.
• Managing a U.S. and foreign patent prosecution docket such that deadlines are met.
• Conducting interviews with examiners at the USPTO.
• Keeping up to date with legal developments in the intellectual property field.
• Undertake continuing education and remain abreast of current patent prosecution issues and trends, as required to maintain appropriate accreditation in the field.
• Enter, maintain, and analyze data that the Firm uses specifically for lawyer and staff

EXPERIENCE SKILLS REQUIRED
• 1-3 years’ experience as a Technical Specialist/Patent Agent.
• Admission to practice before the U.S. Patent and Trademark Office.
• Must possess a Bachelor’s Degree and advanced degree (Ph. D) in biology, biomedical sciences, or a similar background.
• Ability to analyze, interprets, and draws inferences from research findings, and prepares reports. Strong investigative and problem resolution skills.
• Ability to establish and maintain effective working relationships with all contacts.
• Highly organized and responsive, with demonstrated experience managing multiple priorities and deadlines in a changing and demanding
• Ability to collaborate, work independently, and balance competing priorities with a high level of professionalism and with the ability to reprioritize quickly and handle multiple projects simultaneously
• Excellent writing and analytical skills; ability to provide IP advice in a clear, concise manner, both verbally and in writing

ADDITIONAL ABILITIES REQUIRED
• Must be able to communicate and interact effectively with clients and colleagues.
• Manual dexterity required for typing, reaching and lifting of small objects, and operating office equipment.
• Frequent computer use at workstation up to eight hours at a time.
• Frequently work at fast pace with unscheduled interruptions.
• Responsibilities occasionally may require an adjusted work schedule, overtime, and evening/weekend hours in order to meet deadlines.
• Mobility within the office including movement from floor to floor.
• Access information using a computer.
• Any information contained on this form represents the usual method of accomplishing the duties in this job.  Reasonable accommodations will be considered in appropriate circumstances.  However, as the nature of an accommodation may vary depending on the needs and desires of an individual with a disability, it is impossible to describe in advance specific accommodations which will be considered.

 

 

ABOUT THE FIRM

K&L Gates is a fully integrated global law firm with lawyers located across five continents in more than 40 offices. We have experienced dramatic growth in the past decade and now rank among the largest U.S. based law firms in the world.  We take pride in constantly striving for innovation, imagination and an entrepreneurial spirit. We come up with big ideas and then roll up our sleeves to get the job done, guiding our clients through their most complex issues in a variety of industry sectors and across multiple regions of the world. 

The industry recognition the firm has garnered emanates from the foundation of a global community aligned on behalf of our clients. The people at K&L Gates are committed to working together to create a legacy for each other, the firm, our clients, and the communities in which we serve. We thrive in an inclusive and socially conscious environment that embraces diversity and takes a holistic approach to the career evolution of all our professionals.

For more information or to view other job opportunities, please click here to go back to our careers page.

Notice: We participate in E-Verify in certain Firm locations for purposes of verifying employment eligibility.

EQUAL EMPLOYMENT OPPORTUNITY

The Firm is an equal opportunity employer. It is the policy of the Firm that employment decisions shall be based on merit, qualifications and competence. Employment practices will not be influenced or affected by virtue of a person’s race (including traits associated with race, including hair texture and protective hairstyles such as afros, braids, locks, and twists), religion, creed, color, national origin, ancestry, citizenship, physical disability, mental disability, medical condition, genetic information, marital status, sex, pregnancy, childbirth, breastfeeding, gender, parental status, gender identity, gender expression, sexual orientation, age, familial status, domestic violence victim status, military and veteran status, or any other characteristic protected by applicable federal, state, or local law. This policy governs all aspects of employment including, without limitation, recruiting, hiring, compensation, benefits, promotion, assignment, and dismissal. In addition, it is the Firm’s policy to provide an environment that is free of prohibited harassment of any kind including, without limitation, that which is based on sex, race, age, disability, ethnic background, or any other category protected by law (including the categories listed above). The Firm complies with federal and state disability laws and makes reasonable accommodations for applicants and employees with disabilities. If you require reasonable accommodation in completing this application, interviewing, or otherwise participating in the employee selection process, please contact askHR@klgates.com.