Patent Agent (Mechanical Engineering)

About the Intellectual Property – Patent Prosecution Section

Our patent prosecution team takes our client’s strongest innovations and efficiently crafts patents to obtain protections in mission-critical jurisdictions. We have a deep bench of associates, patent agents, and technical advisors to draft applications, respond to office actions, conduct examiner interviews, and perform freedom to operate studies. We help clients identify innovations, develop prosecution strategy, and ensure quality control – providing critical guidance to help clients succeed.

Responsibilities

We are seeking a patent agent with a degree in Mechanical Engineering, Electrical Engineering, Computer Science, or related field to join the IP Prosecution team in any of Mintz’s offices. Patent agents work under the supervision and guidance of partners in our Intellectual Property section and perform a variety of patent-related activities, primarily in the areas of patent prosecution, 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 Mechanical Engineering, Electrical Engineering, Computer Science, and related fields.
• Understand, critique, and provide insightful opinion on scientific data relating to inventions. Conduct comprehensive searches 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.
• Draft 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 rejections 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 rejections, assessing differences between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent.
• Conduct freedom to operate studies, including analyzing non-infringement and invalidity of competitors’ patents.
• Collaborate with colleagues on various projects. Adapt effectively in different team environments. Present ideas, reasoning, and conclusions in a concise way to colleagues. Provide insightful feedback and arguments to colleagues on their ideas.
• Work with clients on innovative and cutting-edge technologies to procure patent protection and build IP portfolios.

Collaboration with team members is an important component of any role at Mintz. Therefore, the firm encourages working from the office approximately 60% of the time in accordance with the firm’s published guidelines.

Qualifications:

• Degree in Mechanical Engineering, Electrical Engineering, Computer Science, or related field.
• At least three years of patent prosecution experience in Mechanical Engineering, Electrical Engineering, Computer Science, or related field.
• Demonstrated verbal skills presenting scientific concepts, terms, and discoveries to wide audiences, including scientists and non-scientists.
• Demonstrated scientific writing ability using proper grammar and vocabulary that 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.
• Able to balance and prioritize multiple competing priorities and responsibilities, be highly organized and exercise extreme attention to detail.
• Able to collaborate and work effectively in team settings.
• Admission to the USPTO required.
• Law firm experience preferred.

About Mintz

Mintz is an Am Law 100 law firm with over 500 attorneys serving clients worldwide. Our attorneys combine legal, business and industry insight to help navigate shifting challenges. We advise business leaders, entrepreneurs, and investors on pivotal deals, disputes, and regulatory matters within our core practice areas. We are strategically located to meet the needs of our clients, with offices in Boston, Los Angeles, New York, San Diego, San Francisco, Washington, DC, and London.

The salary range for this position is $90,000 to $190,000. This position is bonus eligible.
Mintz offers a comprehensive benefits package.