Intellectual Property Technical Advisor
Great opportunity for an experienced Intellectual Property Technical Advisor to join a leading international law firm in either their Boston, Silicon Valley, DC, NYC offices on a hybrid and direct hire basis. Technical advisors are non-lawyers who work in the firm’s Global Intellectual Property Practice under the supervision of Intellectual Property attorneys to provide legal services to clients. Their responsibilities may vary depending upon the project to which they are assigned, but include assisting attorneys and IP senior legal assistants in the representation of clients involved in patent prosecution matters, contested patent proceedings, IP litigation and due diligence. Duties include, but are not limited to the following:
- Prepare, file and prosecute patent applications with the U.S. Patent and Trademark Office (“PTO”) and in foreign jurisdictions in a diverse range of technology areas (e.g. pharma, business methods, computer chips and hardware, medical and personal care devices, heating systems, satellites, laminates, polymers).
- Analyze invention disclosures and develop global patent strategies.
- Handle all prosecution and filing correspondence with clients and global patent offices and local agents, and respond to all patent office communications regarding patent applications. This includes counseling clients and preparing prosecution papers, and instructing local agents in relevant foreign countries. It also includes conducting examiner interviews and appearing in oral proceedings at patent offices, where necessary to represent the client’s interest in obtaining robust global patent protection.
- Prepare analyses and submissions for contested patent proceedings, including petitions for Inter Partes Review and EPO oppositions. It may also include supporting IP litigation cases. Responsibilities would include preparing patentability analyses, including prior art assessments, and infringement and validity contentions. It may also include working with expert witnesses and developing declarations for use in infringement and validity disputes.
- Assist in conducting IP clearance searches and freedom-to-operate analyses to support client product development efforts, licensing and acquisitions.
Interested and qualified Intellectual Property Technical Advisors are encouraged to submit a resume, in Word format, for immediate consideration.