Location: Minneapolis, MN
Experience: 3-5 Years
Practice Area: Intellectual Property - Patent Prosecution (Mechanical Engineering/Electrical Engineering)
Position OverviewWe are seeking a Patent Agent with 3-5 years of experience to join our highly regarded Intellectual Property Department in Minneapolis. 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.
