Scientific Advisor Patent Agent - CBOHN

Job Summary

Our firm seeks a highly qualified Scientific Advisor Patent Agent to join its Intellectual Property practice group, working from its Chicago, IL office.

Patent Agents are integral members of the firm's IP Practice who work on various aspects of the patent application process, work directly with attorneys in the firm, and are expected to communicate effectively and efficiently with attorneys, clients, and patent examiners.

Job Responsibilities

• Prepares and files official correspondence with the USPTO, including initial application filings, responses to Office Actions, and Information Disclosure Statements.
• Drafts patent applications with clarity and technical accuracy, according to the substantive and budget parameters set for each project.
• Communicates with attorneys, office staff, clients, and patent examiners to aid in the prosecution of an application.
• Assists with technical issues in IP due diligence and litigation.
• Maintains a docket of statutory USPTO and client due dates and satisfies all due dates in accordance with client instructions and firm docketing procedures.
• Handles a majority prosecution docket while providing technical analysis and assistance in patent litigation and Patent Trial and Appeal Board proceedings.

Qualifications

Education

• A technical degree in basic or applied sciences or engineering is required.
• Bachelor's in Engineering and a Master's degree in a scientific field such as Electrical Engineering, Telecommunications, Computer Sciences, or Physics is required, and a Ph.D. is preferred.

Experience

• The position requires 5-10 years of patent prosecution experience, including writing samples.
• Law firm experience is preferred.
• Must have valid USPTO Registration Number.

Knowledge, Skills and Abilities

• Must possess detailed knowledge of USPTO filing requirements.
• Independently motivated to succeed and measure success on a team level.
• Demonstrated ability to communicate persuasively, both orally and in writing. Must possess a thorough command of the English language, including excellent spelling, grammar, and punctuation.
• Ability to provide quality client service to both internal and external contacts. Requires patience, creativity, and discretion.
• Demonstrated ability to organize and prioritize work in a dynamic and complex environment to meet deadlines and client and attorney needs.
• Demonstrated ability to work effectively with others in a cooperative manner to accomplish position requirements.
• Desire to assist in litigation and post-grant proceedings.
• Mandarin language skills are a plus.