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scismic

Posted 11 months ago

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

BostonOn-siteFull-time

AI Summary

Patent agent or junior associate role focusing on drafting and prosecuting patent applications in biomedical engineering or materials science, with client counseling and IP strategy.

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

    AI Applications In IPBattery TechnologyBiomed EngineeringCase ManagementClient CounselingDiagnosticsFreedom-to-operate AnalysesInorganic ChemistryInter Partes Review (IPR) / Post-grant Review (PGR)Invalidity And Non-infringement AnalysesIP Due DiligenceIP Landscape AnalysesLicense And Collaboration AgreementsMaterials ScienceMedical DevicesOffice Action ResponsesPatent Search And SurveillancePatent Trial And Appeal Board ProceedingsProsecution StrategyUS Patent ProsecutionUSPTO RegistrationWritten And Oral Communication

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