Biology Patent Agent

Posted On: 06.12.2017
Department: Technology Specialists
Office: Washington, DC

Description
Apply by sending your resume to lateralrecruiting@mintz.com and referencing this position in the subject line of your e-mail. Search Firms with an active fee agreement are also welcome to submit resumes to lateralrecruiting@mintz.com for this position.

Responsibilities
We are looking for a Patent Agent with an advanced degree in Biology or Biochemistry to join our Washington, DC office. Ideal candidates will have a minimum of 5 years’ experience.


Patent Agents work under the supervision and guidance of senior associates and partners in our Intellectual Property section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, opinion drafting, freedom to operate analysis, and due diligence work.

Specific duties include the following:
Assess scientific literature, patents and patent application documents, each encompassing a variety of biology fields, including cell biology, cancer biology, immunology, crystallography, and molecular biology, and possibly materials science and multiple chemistry areas, including organic, synthetic, and physical chemistry.
Understand, critique and provide insightful opinion on scientific data relating to inventions.  Conduct comprehensive search for scientific articles, patents and patent application documents relevant to the subject of an invention.  Perform in-depth analysis comparing an invention with existing discoveries or inventions.  Identify essential elements, features or components of an invention.
Compose patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention, and a set of claims clearly and distinctly defining the invention.
Draft responses to rejection of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, providing detailed analysis of the scientific or patent references cited in the rejection, assessing the difference between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent.
Collaborate with colleagues on various projects.  Adapt effectively in different team environment.  Present ideas, reasoning and conclusions in a concise way to colleagues.  Provide insightful feedback and arguments to colleagues on their ideas.
Work with clients in prosecuting patent applications.  Formulate and ask clients questions essential to clarifying the distinct features or properties of the invention.  Investigate and respond promptly to clients’ inquiries about the prosecution of patent applications.


Qualifications
Ph.D. degree in Biology or Biochemistry (will also accept candidates who have defended dissertation and are waiting for degree to be conferred).
Demonstrated knowledge in the following scientific fields: biology, cell biology, cancer biology, immunology, crystallography, molecular biology.
Demonstrated scientific writing ability using proper grammar and vocabulary which also includes the following skills: analyzing and explaining abstract scientific concepts and terms synthesizing a large amount of scientific or technological literature into a systematic and concise description of the state of the art; and  differentiating and describing important differences among related scientific discoveries or technological breakthroughs.
Demonstrated skills verbally presenting scientific concepts, terms, and discoveries to wide audiences, including scientists and non-scientists.