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scismic

Posted 14 months ago

Open

Patent Agent or Junior/Patent Associate (Biomedical Eng/Material Chemist)

BostonHybridFull-time

AI Summary

Drafts and prosecutes patent applications across US and international jurisdictions, conducts freedom-to-operate and IP landscape analyses, and supports IP due diligence and contested proceedings.

About this role

Scismic is supporting the growth of a Boston-based law firm. Their clients extend across the US and many foreign countries and include Fortune 500 companies, public and private companies, PE/VC firms, financial institutions and wealthy individuals.

We are seeking the following:

  • Level I and II patent agent with a strong technical background in biomedical engineering or materials science
  • 1st to 4th-year associate with a strong technical background in biomedical engineering or materials science

    • Job Functions / Responsibilities

  • Drafting patent applications.
  • Prosecuting patent applications in the US (including replies to Office actions, examiner interviews, and appeals to the Patent Trial and Appeal Board) and directing prosecution worldwide.
  • Conducting freedom-to-operate searches and analyses.
  • Conducting IP landscape analyses.
  • Conducting IP due diligence in the context of an asset purchase or securities offering.
  • Conducting invalidity and non-infringement analyses.
  • Counseling clients on prosecution strategy.
  • Surveilling competitor patent applications and filing observations at the US Patent Office.
  • Assisting with contested cases at the US Patent Office (e.g., inter partes review, post-grant review) or in US district court.
  • Assisting with agreements (e.g., for licenses, research collaborations, research services).

    • Qualifications

  • Advanced degree (Ph.D. preferred; will consider a master’s degree with substantial industry experience); strong technical background in biomedical engineering or materials science. (Engineering work in medical devices, diagnostics, and related areas, as well as bio/medical software and other AI applications or Materials science geared towards battery technology and inorganic chemistry)
  • 3-6 years of experience as a patent agent or patent associate.
  • Prior firm experience and registration with the USPTO.
  • An excellent academic record and superior organizational and communication skills (written and oral).
  • A demonstrated commitment to providing exceptional client service and a creative and entrepreneurial perspective on IP.
  • Experience in litigation and/or post-grant proceedings is a plus.

    • Skills

    Battery TechnologyBiomedical EngineeringFreedom-to-operateInorganic ChemistryIP Landscape AnalysisMaterials ScienceMedical DevicesPatent DraftingPatent ProsecutionUSPTO

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