IP Mechanical/Electrical Engineering Patent Agent

Barnes & Thornburg LLP • Raleigh, NC

6d • Onsite

About The Position

Barnes & Thornburg’s nationally recognized intellectual property practice delivers the strength of a powerhouse IP boutique housed within a full-service AmLaw 100 firm. With 125+ dedicated IP attorneys and agents, we have one of the largest and most technically skilled IP teams in the country, earning consistent recognition in Chambers USA, IAM Patent 1000, World Trademark Review 1000, and IP Stars. Our practitioners advise clients from startups to Fortune 500 companies, who call us "the absolute best" and their "go-to for all things intellectual property."

We are seeking a Patent Agent with 3–5 years of experience to join our highly regarded Intellectual Property Department in Raleigh. The ideal candidate will have a mechanical engineering background with electrical engineering drafting experience and familiarity with wireless device hardware including smartphones, tablets, and wearables. This is an excellent opportunity to work on cutting-edge technologies within a collaborative, high-performing team.

Requirements

• Registration in good standing before the U.S. Patent and Trademark Office
• Bachelor's degree in mechanical engineering
• 3–5 years of patent prosecution experience, preferably at a large law firm or boutique IP firm
• Demonstrated experience drafting and prosecuting patent applications in both mechanical and electrical engineering subject matter
• Strong written and verbal communication skills
• Ability to manage a substantial docket and meet competing deadlines
• Detail-oriented with a commitment to producing high-quality work product

Nice To Haves

• Substantive familiarity with wireless device hardware
• Experience with patent clearance and freedom-to-operate projects
• Experience managing patent portfolios
• Experience supporting patent opinion letter preparation
• Familiarity with non-infringement and invalidity analyses
• Experience assisting with patent due diligence for corporate transactions and M&A matters
• Advanced degree in mechanical engineering, electrical engineering, or a closely related field is a plus

Responsibilities

• Prepare and prosecute U.S. and international patent applications
• Draft patent applications, including specifications, claims, and drawings descriptions, for inventions relating to consumer electronics hardware and electromechanical systems
• Conduct prior art searches and support patentability, freedom-to-operate, and invalidity analyses, including clearance opinions for product launches
• Respond to USPTO Office Actions and manage prosecution strategy in coordination with partners and clients
• Conduct inventor interviews and distill complex technical subject matter into clear, precise patent disclosure
• Support due diligence efforts related to patent portfolios in transactions and licensing matters
• Assist with post-grant proceedings, including inter partes review and reexamination, as needed
• Manage docket deadlines and maintain accurate file records

What This Job Offers

• Job Type: Full-time
• Career Level: Mid Level