4556 - Patent Agent

The Patent Agent II assists with every aspect of patent research, patent application preparation and submission, and patent prosecution activities, leveraging a strong scientific background. This position is responsible for submitting patent applications and reviewing and responding to communications from the U.S. Patent and Trademark Office (USPTO) and foreign patent offices. The Patent Agent II provides direct client support throughout the patent process and manages patent portfolios with minimal attorney oversight. This position may guide more junior patent professionals or other IP personnel and may also provide support in patent litigation matters and business transactions. A hybrid work schedule is available for this position.

A career at Nixon Peabody is the opportunity to do work that matters. It's the chance to use your knowledge to shape what's ahead. To share, to innovate, to learn at a firm that taps the power of collective thinking.

We've created a dynamic, energizing environment that promotes success for our clients and each other. We offer fast growth, connectedness, and training in business as well as law. And our rigorous standards assure you are part of a diverse team of top talent at every turn.

If you're someone who's looking toward the future, we'd love to hear from you.

Location: Chicago, IL; Washington, DC

• Draft, prepare, and submit patent applications to the USPTO with limited attorney supervision.
• Review and respond to communications from the USPTO and foreign patent offices received in pending patent applications with moderate attorney review.
• Engage in more independent client interaction.
• Provide guidance and training to IP support professionals on procedures and requirements.
• Provide substantive support for patent enforcement, licensing and business transactions.
• Provide substantive support with the preparation of patentability, validity, freedom to operate and infringement opinions with attorney review and completion.
• Assist attorneys with more complex research and analysis, conducting literature and patent searching on internet databases.
• Perform other duties as assigned.

To perform this job successfully, you must be able to perform each essential job responsibility listed above, satisfactorily, with or without reasonable accommodation. Nixon Peabody retains the right to change or assign other duties to this position. The requirements listed below are representative of the skills and abilities required.

• 4-7 years of patent agent experience.
• Passed Patent Bar Exam and registered to practice before the U.S. Patent and Trademark Office
• Advanced scientific degree (M.S., Ph.D.); or Bachelor's Degree in technical discipline with relevant experience.
• Familiarity with patenting technologies in AI-driven software and FinTech platforms.
• Uses clear, concise, and accurate communication, tailored for intended audience.
• Strategically interpret client needs and take appropriate action.
• Advanced ability to identify and provide appropriate information to others.
• Effectively develop relationships with clients and maintain working relationships with others.
• Plan and prioritize workload to deliver exceptional legal service to clients.
• May mentor junior patent agents and patent technical specialists.
• Ability to manage deadlines, monitor prosecution docket, and comply with practice group procedures.
• Sound scientific and technical knowledge. AI and Fintech
• Ability to identify and handle issues arising in a matter.
• In-depth understanding of the requirements for patentability.
• In-depth understanding of leading cases affecting patent law and how to apply them.
• Familiarity with patent litigation.
• Detailed understanding of patentability and procedures.
• In-depth knowledge of all stages of patent lifecycle.
• Assist attorneys in applying established procedures and case law appropriately.
• Ability to conduct and evaluate complex patent and literature searches effectively.
• Ability to draft complex patent applications with minimal attorney oversight.
• Ability to draft responses to official actions with minimal attorney oversight.
• Ability to develop and manage patent portfolios with minimal attorney oversight.
• Ability to effectively interact with clients throughout the patent process.

In accordance with applicable Federal and State laws, the anticipated annual salary range for this position, depending on location, is as follows: Chicago, IL and Washington, DC: $136,500 to $210,100

In addition to a standard benefits package, this role may be eligible for additional contingent compensation based on an array of factors, including but not limited to: work performance, geographic location, work experience, education, and qualifications. Because such contingent compensation is not yet calculable or may be zero ($0) in some circumstances, the above-listed salary range(s) are Nixon Peabody's good faith estimate of the annual salary(ies) it reasonably expects to pay for the position at the time of this posting.

Nixon Peabody LLP is an Equal Opportunity / Affirmative Action Employer: Disability / Veteran. Nixon Peabody is committed to creating a fair workplace and does not discriminate against any employee or applicant for employment because of race, creed, color, national origin, sex, age, disability, marital status, sexual orientation, citizenship status, or any other characteristic protected by applicable law.

To comply with Federal law, Nixon Peabody participates in E-Verify. All newly-hired employees are verified through this electronic system established by the Department of Homeland Security (DHS) and the Social Security Administration (SSA) to confirm their identity and employment eligibility. Please refer to the Notice of E-Verify Participation and the Right to Work posters on the Nixon Peabody Careers page for more information.

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