Lateral Associate, Electronics Patent Prosecution and/or PTAB Litigation – 2nd to 5th year

Lawyers, Agents & Scientists•Washington, DC

8d•Hybrid

About The Position

Sterne, Kessler, Goldstein & Fox P.L.L.C. is a highly regarded intellectual property specialty law firm seeking an Associate for its Electronics Group. The firm fosters a welcoming, inclusive, and intellectually stimulating environment, recognized as a "great place" to work. This role is based in Washington, D.C. on a hybrid basis, offering flexibility in choosing in-office days. The firm provides a competitive compensation package with excellent benefits and is conveniently located near public transportation, restaurants, and shops. Sterne Kessler is committed to diversity and creating an inclusive environment for all employees.

Requirements

BS in Electrical Engineering, Computer Engineering, or related field of study
JD from an ABA-accredited institution
USPTO registration number
Minimum 2 years of experience with patent preparation and prosecution, primarily in the Electrical and Computer Engineering spaces including semiconductor, wireless communications, and hardware technologies

Nice To Haves

Some exposure to PTAB litigation proceedings
MS in Electrical Engineering or Computer Engineering, or related field of study

Responsibilities

Prepare and file original utility and design patent applications, including drafting detailed specifications, claims, and figures based on inventor disclosures and technical documentation.
Analyze USPTO Office Actions, formulate strategic arguments to overcome rejections based on novelty (§102) and non-obviousness (§103), and draft persuasive responses and amendments.
Conduct comprehensive legal research and analysis of statutes, regulations, case law, and administrative decisions (e.g., USPTO rules) to develop sound legal strategies and arguments.
Maintain regular, clear, and professional communication with internal clients, providing timely updates, gathering necessary information, and being responsive to Director and senior Associate assignments and ad hoc requests. Over time as the Associate gains confidence and abilities in their individual legal practice, Associates may be tasked with external client communication as well, under supervision of Directors.
Interface directly with inventors and engineers to elicit invention details, understand the prior art landscape, and secure necessary information for application preparation.
Manage and monitor the prosecution dockets for a designated portfolio of domestic and international patent applications.