Patent Prosecution Section Our patent prosecution team takes our client’s strongest innovations and efficiently crafts patents to obtain protections in mission-critical jurisdictions. We work with leading innovator clients developing cutting edge technologies. We have a deep bench of associates, patent agents, and technical advisors to draft applications, respond to office actions, and conduct examiner interviews. We help clients identify innovations, develop prosecution strategy, and ensure quality control — providing critical guidance to help clients succeed. Responsibilities Associate with a minimum of two years of patent prosecution experience and an advanced degree in organic or medicinal chemistry or relevant laboratory experience to join Mintz’s IP Prosecution team. San Diego and San Francisco are the preferred office locations. Work directly with clients on innovative and cutting-edge technologies to develop IP strategy, procure patent protection and build IP portfolios. Assess scientific literature, patents, and patent application documents, each encompassing a variety of chemical subjects, including organic, synthetic, and medicinal chemistry, as well as material science. Understand, critique and provide insightful opinion on scientific data relating to inventions. Conduct a comprehensive search for scientific articles, patents, and patent application documents relevant to the subject of an invention. Perform in-depth analysis comparing an invention with existing discoveries or inventions. Identify essential elements, features, or components of an invention. Compose patent applications comprising a comprehensive background of the field of an invention, a description of critical features and components of the invention, and a set of claims clearly and distinctly defining the invention. Draft responses to rejection of a patent application for an invention from the United States Patent and Trademark Office and other worldwide Patent Offices, providing detailed analysis of the scientific or patent references cited in the rejection, assessing the difference between the invention and the citations, and presenting convincing arguments and reasoning why the patent application is to be allowed as a patent. Collaborate with colleagues on various projects. Adapt effectively in different team environment. Present ideas, reasoning, and conclusions in a concise way to colleagues. Provide insightful feedback and arguments to colleagues on their ideas. Collaboration with team members is an important component of any role at Mintz. Therefore, the firm encourages working from the office approximately 60% of the time in accordance with the firm’s published guidelines. Qualifications: M.S. or Ph.D. degree in organic or medicinal chemistry Graduated with a JD or LLM from an ABA accredited law school Admitted to or eligible for admission to the California, MA, DC, or NY bar Minimum of 2 years of law firm or in-house patent prosecution experience. USPTO admission required. Demonstrated knowledge in the following scientific fields: organic chemistry, synthetic chemistry, medicinal chemistry, and pharmaceutical sciences. Demonstrated skills verbally presenting scientific concepts, terms, and discoveries to wide audiences, including scientists and non-scientists. Demonstrated scientific writing ability using proper grammar and vocabulary that also includes the following skills: analyzing and explaining abstract scientific concepts and terms synthesizing a large amount of scientific or technological literature into a systematic and concise description of the state of the art; and differentiating and describing important differences among related scientific discoveries or technological breakthroughs. Able to balance and prioritize multiple competing priorities and responsibilities, be highly organized and exercise extreme attention to detail Able to collaborate and work effectively in team settings All Mintz employees are required to be up to date with their COVID-19 vaccination unless they have a medical or religious basis precluding vaccination for which they are legally entitled to an exemption from the requirement that can be accommodated by the firm. Consistent with this requirement, prior to your start date you will be required to provide proof that you have received all recommended doses in the primary series and one booster when eligible. Generally, we consider an employee eligible for the booster if they completed the primary series of the vaccine at least six months ago and have not tested positive for COVID-19 in the prior 90 days. Getting a second booster is not necessary to be considered up to date at this time. About Mintz Mintz is an Am Law 100 law firm with over 500 attorneys serving clients worldwide. Our attorneys combine legal, business and industry insight to help navigate shifting challenges. We advise business leaders, entrepreneurs, and investors on pivotal deals, disputes, and regulatory matters within our core practice areas. We are strategically located to meet the needs of our clients, with offices in Boston, Los Angeles, New York, San Diego, San Francisco, Washington, DC, and London.
Years of Experience
1-3 | 3-5 | 5-7 | 7+