Technical Specialist / Patent Agent - Life Sciences

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 (Boston, Chicago, Houston, Orange County, Philadelphia, San Francisco, Silicon Valley, 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 :

• An advanced degree (master's or PhD) in a biological field, including for example Biochemistry, Molecular Biology, Cell Biology, Microbiology, or Biomedical Engineering with excellent academic credentials

• At least one year of experience as a practicing patent agent in the field of life sciences or two years professional experience in life sciences

• Registered to practice before the U.S. Patent and Trademark Office

• 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 California, the salary range for this job posting is: $113,580 - $181,728.00

For positions in Washington D.C., the salary range for this job posting is: $104,494.00 - $167,190

It is unlawful in Massachusetts to require or administer a lie detector test as a condition of employment or continued employment. An employer who violates this law shall be subject to criminal penalties and civil liability.