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 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 will reside in the Washington, D.C office 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:

• Perform patent searching and investigate inventorship issues

• Manage the intake of invention disclosures and review disclosures for patentability, novelty, and non-obviousness

• Evaluate qualification and applicability of prior art

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

• Draft new patent applications; act as a second reviewer for filings; manage the processing of e-File filings

• Convert prior provisional applications into utility applications, foreign filed applications into U.S. applications and U.S. applications into foreign applications

• Prepare replies to U.S. and foreign office actions

• Assist attorneys with prosecution; identify alternative prosecution scenarios and claim strategies to develop patent portfolios

• Conduct interviews with USPTO examiners; prepare appeals to PTAB and clearance analyses

• Prepare reexamination petitions, reissue applications, and IPR and CBM petitions

• Prepare substantive client correspondence

• Meet with clients to discuss inventions and ascertain whether the inventions are likely to lead to commercially meaningful patent claims

• Provide patent prosecution training

Education & experience:

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

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

• 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.

Qualified candidates must apply online by visiting our website at www.morganlewis.com and selecting “Careers.”

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For positions in Washington D.C., the salary range for this job posting is

The base salary or hourly 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.  The final salary or hourly wages offered may be outside of this range based on other reasons and individual circumstances.  Additionally, salary or hourly wages may be only part of the total compensation package. The total compensation package for this position may also include a full range of medical, financial, and/or other benefits (including 401(k) eligibility and various paid time off benefits, such as vacation, sick time, and parental leave), dependent on the position offered. Details of participation in these benefit plans will be provided if an employee receives an offer of employment.  If hired, the 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.

Morgan, Lewis & Bockius LLP is committed to equal employment opportunity and providing reasonable accommodations to applicants with physical and/or mental disabilities. We value and encourage diversity and solicit applications from all qualified applicants without regard to race, color, gender, sex, age, religion, creed, national origin, ancestry, citizenship, marital status, sexual orientation, physical or mental disability, medical condition, veteran status, gender identity, genetic information, or any other characteristic protected by federal, state, or local law.

Pursuant to applicable state and municipal Fair Chance Laws and Ordinances, we will consider for employment qualified applicants with arrest and conviction records.

California Applicants: Pursuant to the California Consumer Privacy Act, the following link contains the Firm's California Consumer Privacy Act Privacy Notice for Candidates which explains the categories of personal information that we collect and the purposes for which we use such personal information. CCPA Privacy Notice for Candidates

Morgan Lewis & Bockius LLP is also an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, sex, sexual orientation, gender identity, national origin, disability status, protected veteran status, or any other characteristic protected by law.

If you are interested in applying for employment with Morgan Lewis and need special assistance or accommodation to use our website or to apply for a position, please call or email the following contacts:

• Professional Staff positions: Please call 888.534.5003 or email talent.acquisition@morganlewis.com

Morgan, Lewis & Bockius, LLP reasonably accommodates applicants and employees who need them to perform the essential functions of the job because of disability, religious belief, or other reason protected by applicable law.  If you believe you need a reasonable accommodation during the application process, please contact Talent Acquisition at talent.acquisition@morganlewis.com