Practice Innovation Attorney or Patent Agent- Prosecution & Counseling

IP Attorneys•Boston, MA

4d•Onsite

About The Position

The Practice Innovation Attorney or Patent Agent drives the evolution of the firm's patent prosecution and counseling workflows by championing new approaches and turning promising ideas into practical applications. This role serves as a liaison between the firm’s legal professionals, clients, and the Information Technology Department to ensure the firm’s technology tools and capabilities are effectively meeting the needs of our patent prosecution and counseling practice. The role goes beyond capturing current practices to envision better alternatives and meaningfully improve how work gets done. The Practice Innovation Attorney or Patent Agent actively represents the needs of the firm’s attorneys, patent agents, technology specialists, and clients to the Information Technology Department and third-party product and service providers, while partnering with the Information Technology Department on the selection, implementation, and support of technology tools to successfully meet those needs. Focusing on the Prosecution & Counseling Department, the Practice Innovation Attorney or Patent Agent works closely with the Department Chair and the department’s attorneys, patent agents, technology specialists, and paralegals to develop a solid understanding of departmental patent prosecution workflows and use of technology tools, as the foundation for reimagining them. This means both automating and refining existing workflows where that adds value and building entirely new workflows where the opportunity is greater. Additionally, the Practice Innovation Attorney or Patent Agent identifies opportunities to improve efficiency and contributes to the design, evaluation, and piloting of solutions to realize those opportunities, partnering with the IT Department on design, testing, selection, implementation, and ongoing support. The Practice Innovation Attorney or Patent Agent also helps to balance the needs and vision of the practice with the firm’s security, confidentiality, export-control, and client-commitment requirements, communicating with practicing attorneys and other non-technical team members to set expectations regarding timelines and transitions to new tools.

Requirements

Registration to practice before the USPTO is required
Attorney candidates are also required to have a Juris Doctorate and admission to a state bar (MA or NY preferred).
Minimum of 2-3 years experience as a practicing attorney or knowledge management attorney in a law firm, or as a practicing patent agent in a law firm, specializing in patent prosecution.
Knowledge of generative AI solutions used in the legal industry in the context of an intellectual property practice.
Familiarity with the issues specific to deployment of machine learning, workflow automation, and generative AI and other types of software in a legal environment (e.g., computer security, confidentiality, export controls, integration with existing workflows, etc.).
Ability to develop and propose creative alternatives, pilot unproven ideas, and generate buy-in from practitioners for new ways of working.
A strong presence who instills confidence and an understanding of key issues related to implementing machine learning, workflow automation, and generative AI solutions in a legal practice.
The interpersonal skills to build lasting relationships and drive consensus; evidenced ability to establish and maintain effective working relationships across all levels of the firm and manage stakeholder expectations.
Exceptional oral and written communication skills and the ability to effectively communicate workflow and project updates, with demonstrated confidence and effectiveness in both one-on-one and large presentation settings.
Strong organizational and strategic planning abilities with exceptional attention to detail and professional judgment.
Experience working with general-purpose AI solutions (e.g., ChatGPT, Claude, Gemini, etc.), AI solutions custom built for patent prosecution tasks, document management systems, docketing systems, and other tools and systems used in patent prosecution practice.
Strong time management, prioritization, problem-solving, and organizational skills and the ability to work effectively in a fast-paced environment.
Flexibility and capacity to respond calmly, efficiently, and effectively in stressful situations.
Punctual, reliable, and able to meet set deadlines and work effectively under pressure.
Ability to maintain confidentiality of client matters and other firm business information.

Responsibilities

Works with department leadership and those supporting the practice to understand the needs of the department’s legal practitioners and clients to develop high-impact strategies for improving client service and operational efficiency which leverage knowledge management principles and technology tools such as machine learning, workflow automation, and generative AI.
Collaborates with department leadership, practice support, and the IT Department to develop related implementation plans, including pilot and proof of concept programs, and leads the execution of those plans to integrate recommended solutions into the department’s workflows.
Participates in the firm’s technology governance and vendor review processes, bringing practice-validated requirements and recommendations into the firm’s established processes for tool selection, security and export-control review, budgeting, and deployment.
Together with the Senior Practice Innovation Manager and Manager of Information Security and Compliance, contribute the practitioner’s perspective to the assessment and selection of technology tools, including functional requirements, benchmarking against incumbent and competing products, build-versus-buy recommendations, and support for the Information Security team’s diligence on a vendor’s data handling, hosting locations, retention, and model-training process.
Captures, organizes, and operationalizes the department’s collective expertise into accessible knowledge systems and AI-ready resources that improve consistency, efficiency, and quality of legal work across the department.
Educates attorneys, patent agents, and technology specialists within the department on effective utilization of generative AI tools, including workflow automation, prompt engineering, minimizing inaccuracies, and improving data inputs to ensure accurate, reliable outputs.
Determines which work product, positions, and matter data generated across the firm carry lasting value, and routes those materials into the firm’s knowledge systems in structured, retrievable form suitable for use by AI tools.
Debriefs prosecution and counseling teams on significant and completed matters to surface know-how that is not otherwise recorded, including claim-drafting approaches, argument strategies that succeeded or failed, examiner and art unit intelligence, and client-specific preferences.
Converts that material into reusable assets, including model forms, annotated exemplars, response and argument playbooks, and decision trees for prosecution strategy, and keeps those assets current as the law, USPTO practice, and the firm’s position change.
Drives organizational change by building awareness, providing training, and securing buy-in from stakeholders with varying levels of familiarity with generative AI, and leads by example as an expert-level user of these tools.
Works with the IT Department to design and maintain controls ensuring the firm’s use of AI and automation is consistent with the USPTO’s guidance on the use of AI-based tools in practice before the Office.
Maintains a client-level and matter-level record of AI restrictions arising from outside counsel guidelines, engagement letters, and protective orders.
Works with the IT Department to implement controls that enforce those restrictions and to ensure that knowledge and AI systems segregate confidential and unpublished client information.
Stays abreast of the evolving technology landscape of machine learning, workflow automation, and generative AI, including developments in legal and ethical standards, to guide responsible innovation and strategy.
Represents the firm’s innovation capabilities in client-facing settings, supporting business development discussions, responses to proposals and client questionnaires, and client inquiries and audits concerning the firm’s use of AI and its handling of client data, in coordination with the Office of the General Counsel, Client Engagement, and Marketing.
Works with the Office of the General Counsel and the Client Engagement team to ensure that any proposed solutions comply with legal and ethical obligations and client requirements.