Registration in good standing before the U.S. Patent and Trademark Office
Bachelor's degree in mechanical engineering
3-5 years of patent prosecution experience, ideally at a large or boutique IP firm
Experience in drafting and prosecuting patents in mechanical and electrical engineering
Strong written and verbal communication skills
Ability to manage a substantial docket and maintain timelines
Detail-oriented with a focus on high-quality results.
Responsibilities
Prepare and prosecute U.S. and international patent applications
Draft patent applications for consumer electronics and electromechanical systems
Conduct prior art searches and support patentability and clearance analyses
Respond to USPTO Office Actions and manage prosecution strategies
Conduct inventor interviews for clear patent disclosures
Support due diligence related to patent portfolios in transactions
Assist with post-grant proceedings when needed
Manage docket deadlines effectively.
Benefits
Gain exposure to cutting-edge technologies in consumer electronics
Work within a collaborative, high-performing team environment
Opportunity to handle substantial and high-quality patent work
Involvement in diverse projects including due diligence and transactional work.
Full Job Description
Location: Indianapolis, IN
Experience: 3-5 Years
Practice Area: Intellectual Property - Patent Prosecution (Mechanical Engineering/Electrical Engineering)
Position Overview
We are seeking a Patent Agent with 3-5 years of experience to join our highly regarded Intellectual Property Department in Indianapolis. The ideal candidate will have a mechanical engineering background with electrical engineering drafting experience and familiarity with wireless device hardware including smartphones, tablets, and wearables. This is an excellent opportunity to work on cutting-edge technologies within a collaborative, high-performing team.
Key Responsibilities
Prepare and prosecute U.S. and international patent applications
Draft patent applications, including specifications, claims, and drawings descriptions, for inventions relating to consumer electronics hardware and electromechanical systems
Conduct prior art searches and support patentability, freedom-to-operate, and invalidity analyses, including clearance opinions for product launches
Respond to USPTO Office Actions and manage prosecution strategy in coordination with partners and clients
Conduct inventor interviews and distill complex technical subject matter into clear, precise patent disclosure
Support due diligence efforts related to patent portfolios in transactions and licensing matters
Assist with post-grant proceedings, including inter partes review and reexamination, as needed
Manage docket deadlines and maintain accurate file records
Requirements:
Registration in good standing before the U.S. Patent and Trademark Office
Bachelor's degree in mechanical engineering
3-5 years of patent prosecution experience, preferably at a large law firm or boutique IP firm
Demonstrated experience drafting and prosecuting patent applications in both mechanical and electrical engineering subject matter
Strong written and verbal communication skills
Ability to manage a substantial docket and meet competing deadlines
Detail-oriented with a commitment to producing high-quality work product
Preferred Qualifications:
Substantive familiarity with wireless device hardware
Experience with patent clearance and freedom-to-operate projects
Experience managing patent portfolios
Experience supporting patent opinion letter preparation
Familiarity with non-infringement and invalidity analyses
Experience assisting with patent due diligence for corporate transactions and M&A matters
Advanced degree in mechanical engineering, electrical engineering, or a closely related field is a plus
We will not consider resumes submitted by external agencies or recruiters for this position. Recruiters and agencies will not be compensated for assisting Barnes & Thornburg LLP in recruiting for this position, regardless of whether such party has a recruiting contract with us.
