Patent Prosecution - Patent Agent Chemistry

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 patentrelated 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 indepth 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 cuttingedge technologies to procure patent protection and build IP portfolios

Qualifications:

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