Patent Prosecution Special Counsel (Life Sciences)

Practice Areas: Patent Prosecution Exp.: 2+ Years
Description:
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, and conduct examiner interviews. We help clients identify innovations, develop prosecution strategy, and ensure quality control — providing critical guidance to help clients succeed.

Responsibilities:
  • Associate with a minimum of two years of patent prosecution experience in Molecular Biology, Genetics, Immunology, or related biological science to join the IP Prosecution team in Mintz’s San Diego office.
  • Assess scientific literature, patents and patent application documents, each encompassing a variety of biology fields, including DNA sequencing technologies, cell biology, cancer biology, immunology, genetics, and molecular biology. Understand, critique and provide insightful opinion on scientific data relating to inventions.
  • Conduct comprehensive search for scientific articles, patents and patent application documents relevant to 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.
  • Compose 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 rejection 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 rejection, assessing the difference between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent.
  • 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 in prosecuting patent applications; formulate and ask clients questions essential to clarifying the distinct features or properties of the invention; investigate and respond promptly to clients' inquiries about the prosecution of patent applications.

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:
  • Ph.D. degree in molecular biology, genetics, immunology, or related biological science, with experience prosecuting applications in the DNA sequencing space
  • Graduated with a JD or LLM from an ABA accredited law school
  • Admitted to or eligible for admission to the California bar
  • Minimum of 2 years of law firm or in-house patent prosecution experience.
  • USPTO admission required.
  • Demonstrated skills verbally 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
  • Absent an exemption required by law, each Mintz employee is required to be fully vaccinated against COVID-19

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