The Nashville office of Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C. seeks a Patent Associate with experience in mechanical, or electrical engineering, or in physics or computer science, to join its Intellectual Property practice group. Ideal candidates will have up to four years’ experience. Being a registered patent attorney with the USPTO is a plus. This position will work with the patent prosecution team and the job responsibilities will involve U.S. and foreign patent prosecution practice, including preparation of patent applications, office action responses, and patentability search reports. Other responsibilities include reviewing invention disclosures and participating in discussions with inventors to understand their new inventions; working with third-party drafters to prepare formal figures for a patent application; searching literature and patent databases to determine the patentability of inventions; drafting written assessments of the prospects of obtaining patent protection; writing patent applications; preparing responses to communications from the USPTO; managing dockets for patent-application matters, including information disclosure statements, assignments, inventor oath/declarations, application data sheets, and other matters; developing arguments for patentability to Patent Office Examiners, including office-action responses and appellate briefs; and reviewing patents as part of the IP due diligence for a potential acquisition or merger. Ideal candidates will have superior academic credentials and very strong writing skills and oral communication skills. We are especially looking for candidates who are creative, mature, detail-oriented, collaborative, and inquisitive, and who will thrive on the excitement of joining a growing IP practice and working with a group who is passionate about furthering the success of our clients and the Firm. We seek candidates with a strong work ethic paired with the ability to juggle multiple job responsibilities and the interpersonal skills necessary to work effectively with business leaders, attorneys, scientists, engineers, inventors, and patent examiners. Tennessee law license required, or candidate must be able to take the Tennessee Bar and obtain license promptly.
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