Senior Patent Prosecution Attorney

Profile

A law firm in Minneapolis, MN, is seeking a Senior Patent Prosecution Attorney with 8+ years of experience. The ideal candidate will possess a robust technical background, particularly in electrical engineering or a related discipline, and must be registered to practice before the U.S. Patent and Trademark Office.

Duties and Responsibilities:

• Manage and oversee a diverse patent prosecution docket, including drafting and prosecuting patent applications.
• Conduct thorough prior art searches and patentability assessments.
• Analyze and respond to office actions issued by the U.S. Patent and Trademark Office.
• Provide strategic counseling on patent portfolio management and IP strategies.
• Advise clients on patent-related matters, including infringement and validity opinions.
• Conduct IP due diligence for mergers, acquisitions, and licensing transactions.
• Mentor junior associates and collaborate with firm attorneys and clients in patent matters.
• Stay abreast of developments in patent law, regulations, and industry trends.

Requirements:

• Juris Doctor (JD) degree from an accredited law school.
• Admission to the bar and in good standing in at least one state.
• Registration to practice before the U.S. Patent and Trademark Office.
• 8+ years of experience in patent prosecution, with a focus on electrical engineering or related fields.
• Proven ability to independently manage a high-volume patent prosecution workload.

Skills and Competencies:

• Exceptional written and verbal communication skills.
• Strong analytical and problem-solving abilities.
• Ability to work effectively both independently and as part of a team.
• Proficiency in conducting prior art searches and patentability assessments.
• Experience in drafting patent applications and responses to office actions.
• Demonstrated leadership and mentoring capabilities.

Education and Certifications:

• Bachelor’s degree in Electrical Engineering or a related technical discipline.
• Juris Doctor (JD) degree from an accredited law school.
• Admission to and active membership in at least one State Bar.

Company info

BCG Attorney Search
200 South Wacker Drive, 31st Floor
Chicago
Illinois
United States 60606
Phone : (312) 321-9411
Fax : (213) 895-7306