Technical Specialist / Patent Agent - Technology

Morgan, Lewis & Bockius LLP, one of the world’s leading global law firms with offices in strategic hubs of commerce, law, and government across North America, Asia, Europe, and the Middle East, is seeking to hire a Patent Agent and/or Technical Specialist to join their award-winning Intellectual Property Practice Group and be responsible for preparing, filing, and prosecuting patent applications before the U.S. Patent and Trademark Office (“USPTO”).

This position can reside in a variety of office locations (Silicon Valley, Seattle, Philadelphia, Houston, and Washington, D.C) 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/Technical Specialist 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 :

• Preparing, filing and prosecuting patent applications before the US Patent and Trademark Office

• Performing prior art searches and analysis

• Patentability analysis

• IP due diligence

• Engage in practice development activities to build and maintain client relationships

• Prepare substantive client correspondence

• Instruct local counsel for foreign filings and Office Actions

• Assist in patent clearance studies and other patent-related opinion projects

• Ability to apply advanced concepts in any life sciences field, with particular emphasis and/or expertise in molecular biology, cell biology, and/or biochemistry

• Study and analyze scientific or technical documents, including previously published patent documents, to assess patentability, novelty and inventiveness

• Convert prior provisional applications into utility applications

• Convert foreign filed applications into U.S. applications

• Convert U.S. applications into foreign applications

Education and experience :

• Bachelor’s degree (or graduate degree) preferably in electrical engineering, but a degree in computer science, physics, computer engineering or mechanical engineering will be considered

• Minimum 2 years of experience prosecuting or examining patent applications in the electrical arts, preferably display and battery technology and optics

• Registered to practice before the U.S. Patent and Trademark Office or eligible to sit for the USPTO patent agent exam

• 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.

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For positions in Silicon Valley, California, the salary range for this position is: $113,580.00 - $181,728.00

For positions in Seattle, WA, Washington D.C.and Orange County, CA,the salary range for this position is: $104,494.00 - $167,190.00

The base salary wage range for this position will be determined during the interview process and will vary based on multiple factors, including but not limited to prior experience, relevant expertise, current business needs, and market factors. Final salary wages offered may be outside of this range based on other reasons and individual circumstances. Additionally, salary wages may be only part of the total compensation package. The total compensation package for this position will also include eligibility for an annual discretionary bonus. Subject to the terms and conditions of the applicable plans and policies then in effect, eligible employees may enroll in: a 401(k) plan, as well as participate in Company-sponsored medical, dental, vision, life, disability, accidental death and dismemberment, business travel accident insurance plans, and health savings and flexible spending accounts for the employee and the employee’s eligible dependents. Subject to the terms and conditions of the applicable plans and policies then in effect, eligible employees may utilize the Employee Assistance Program, Work/Life Services, HealthAdvocate, Bright Horizons Back-Up Child Care, and WageWorks Commuter Benefits for the employee and the employee’s eligible dependents. Employees will also receive: 9 paid holidays per calendar year, 2 personal days per year, and up to 20 days of vacation per year. In accordance with state applicable law, eligible employees will earn 1 paid sick leave hour for 30 hours worked. Eligible employees may also take up to five days off for bereavement leave, up to 12 weeks of paid parental leave per year and up to 10 weeks of paid pregnancy disability leave per pregnancy. Details of participation in these benefit plans will be provided if an employee receives an offer of employment. If hired, employee will be in an "at-will position" and the firm reserves the right to modify base salary (as well as any other discretionary payment or compensation or benefit program) at any time, including for reasons related to individual performance, firm or individual department/team performance, and market factors.