Patent Agent - Mechanical (NYC)

Summary

Stinson LLP is seeking an experienced patent agent to join the patent prosecution group of our Intellectual Property and Technology Division. The position involves drafting and prosecuting U.S. and foreign patent applications, providing patentability assessments, and assisting with freedom to operate and due diligence assessments.

Responsibilities

• Draft and globally prosecute patent applications
• Coordinate and correspond with foreign law firms and associates to file foreign patent applications
• Coordinate and correspond with clients for processing and legalization of formal documents for filing in U.S. and foreign patent offices
• Review country requirements and obtain Foreign Filing License where needed
• Maintain client patent portfolio
• Prepare and send notices to clients regarding upcoming deadlines
• Correspond with foreign law firms regarding filings, deadlines and billings
• Anticipate supervising partner or client needs for specific projects
• Delegate effectively and as appropriate with Paralegals or Legal Administrative Assistants
• Meet billable hour requirement of 1650 per year

Requirements

• Required Education & Experience: Bachelor’s degree, higher degree, or equivalent in Electrical Engineering, or similar engineering degree and/or work experience. S. Patent & Trademark Office registration.
• Exceptional writing, analytical, and communication skills.
• Minimum 5 years of experience in patent preparation and prosecution.
• Experience managing patent prosecution docket and taking "ownership" of patent applications and patents during all phases of patent prosecution.
• Demonstrated ability to collaborate with supervising partners, patent legal administration assistants, patent paralegals, and docketing specialists.
• Law firm or in-house IP experience.

Preferred

• 7+ years of experience in patent preparation and prosecution is highly preferred.
• Extensive experience across a broad range of technologies, including mechanical, electro-mechanical, electrical, and software, is a significant plus.

Essential Functions

• Patient Agent (95%): Draft and globally prosecute patent applications. Coordinate and correspond with foreign law firms and associates to file foreign patent applications. Coordinate and correspond with clients for processing and legalization of formal documents for filing in U.S. and foreign patent offices. Review country requirements and obtain Foreign Filing License where needed. Maintain client patent portfolio. Prepare and send notices to clients regarding upcoming deadlines. Correspond with foreign law firms regarding filings, deadlines and billings. Anticipate supervising partner or client needs for specific projects. Delegate effectively and as appropriate with Paralegals or Legal Administrative Assistants. Meet billable hour requirement of 1650 per year.
• General and Administrative (5%): Performs other duties as assigned.

Competencies

• Strong verbal and written communication skills.
• Self-motivated with excellent organizational skills and attention to detail.
• Highly professional with a strong customer service orientation, commitment to meeting deadlines, and ability to multitask in a fast-paced and dynamic environment.
• Strong professional, independent thinking skills with strength in problem solving and the ability to offer constructive opinions and creative solutions.
• A team player who motivates and educates other team members.
• Regular and predictable attendance is an essential function of the position.

Work Environment & Physical Demands

This job operates in a professional office environment. This role routinely uses standard office equipment such as computers, phones, photocopiers, filing cabinets and fax machines. While performing the responsibilities of the position, these work environment characteristics are representative of the environment the person in this position will encounter. While performing the duties of this job, the employee will work in a professional, fast paced office environment that may require additional hours to complete work. These physical demands are representative of the physical requirements necessary for an employee to successfully perform the essential functions of the position. If an employee is unable to perform the essential functions of the position, Stinson LLP will evaluate whether a reasonable accommodation can be made to enable the employee to perform the described essential functions of the position.

Supervisory Responsibility

This position has no supervisory responsibilities.

Travel

No travel is expected for this position.

Benefits & Compensation

• At Stinson LLP, we are committed to the success of our employees. We are equally committed to providing competitive, affordable health and wellness benefits to help take care of yourself and your family, including:
• Medical, dental, and vision health plans
• Medical savings accounts
• Firm-provided Employee Assistance Program (EAP), Wellness Program, and Caregiving Support Concierge Services
• Employer-paid life insurance and AD&D
• Short- and long-term disability benefits
• Generous paid time off for holidays, vacation, bereavement, jury duty, and paid leave for sick and safe time, parental, and military
• Adequate work-life programs, including service bonuses, back-up child, elder, and pet care, and an employee discount program

The salary range for this role is $99,000 - $122,000. The salary range for this position is based on a variety of factors, including experience, skills, qualifications, and location. The range is provided as an initial approximation at the time of posting and may vary based on the individual’s unique qualifications and experience.