Requisition ID:

7385

Registered Patent Agent

Under the general direction of supervising attorney(s), the Paralegal Manager and according to established firm policies and procedures, the Intellectual Property Department is seeking an experienced Patent Agent to join its IP Patent Litigation practice group. The position can be based out of the Firm's Washington, DC or Dallas offices. Katten has a very active IP practice that deals with some of the most complex and interesting telecommunication, software, signal-processing, audio-processing, automation, autonomous, AI, and related technologies. This position requires sensitivity to client needs and the ability to support lasting client relationships.

Successful candidates must be admitted to practice before the USPTO, capable of working independently, be proactive, enjoy learning about new technologies and must be capable of working both on her/his own as well as a part of a team. An advanced degree in physics, electrical or computer engineering, or related scientific or technology discipline is required. Katten provides a dynamic, team-oriented, solution-focused environment of dedicated professionals; and this is an opportunity to be a part of one of the fastest growing IP practices.

Katten offers a hybrid work model, allowing the flexibility to work both on-site and remotely on a regular basis (KattenFlex). The requirement for this role is to work 2-3 days onsite in the Dallas office.

Essential Duties and Responsibilitiesinclude, but may not be limited to, the following. Other duties may be requested and/or assigned. Regular and predictable attendance is an essential function of the position. Essential functions are primary job duties that an individual must be able to perform successfully with or without a reasonable accommodation. Reasonable accommodations may be made to enable individuals with disabilities to perform the essential functions.

• Client billable hour requirement: 1,550 hours annually (130 client billable hours average per month).
• Draft applications and responses to office actions for US and foreign applications.
• Support the Firm's attorneys in the technical aspects of post-grant proceedings (PGRs, IPRs, reissues, reexaminations, and appeals), invalidity and non-infringement opinions, due diligence (including freedom to operate studies), and related patent litigation.

Knowledge, Skills, and Abilities

• Master's or Ph.D. degree in physics, electrical engineering, computer engineering, or a related engineering discipline with 3 years (6 years preferred) of experience as a registered patent agent prosecuting patent applications. Candidates with a Bachelor's degree and significant industry experience may also be considered. Industry experience (3+ years in technology or engineering companies) is a plus. Applicable knowledge and understanding of all facets of U.S. and foreign patent prosecution. Experience working directly with the United States Patent and Trademark Office.
• Computer proficient with experience and working knowledge of Westlaw and other patent-related databases, Internet research, due diligence, Excel, Outlook and MS Word preferred.
• Excellent analytical, technical, and critical-thinking skills require an aptitude for detail, precision, and logic with comprehensive knowledge of patent requirements and regulations in order to analyze and research patent-related data, process information, conduct legal research and perform essential duties.
• Exhibit high degree of initiative in exercising independent judgment in order to organize and manage multiple priorities simultaneously in a fast-paced, deadline-driven, detail-oriented work environment, ensure work is completed within strict deadlines and make decisions based upon results of research.
• Excellent organizational skills including record keeping, data collection, and system information. Ability to compile and analyze data and furnish concise, detailed information in report format, written correspondence, e-mail or verbally.
• Excellent interpersonal, verbal, and written communication skills. Ability to communicate with courtesy and diplomacy, efficiently follow written and verbal instructions, provide information, and maintain effective relationships with a diverse group of attorneys, clients, staff and outside contacts.
• Ability to perform mathematical calculations and apply mathematical concepts when computing, reconciling balances, and verifying numerical data on forms and documents.
• Ability to occasionally retrieve and distribute files, written documentation and copies, or office supplies weighing up to 20 pounds.
• Work occasionally requires more than 37.5 hours per week to perform the essential duties of the position.
• Ability and availability to travel to other Firm locations when required.

We offer an outstanding benefit package which includes: medical/dental/vision, 401k with employer contribution, parental leave, transportation fringe benefit program, back-up care option, generous paid time off policy, and long-term and short-term disability policies.

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